13425719 (P.T.A.B. Aug. 21, 2018)

Ex Parte Johnson

Patent Trial and Appeal BoardAug 21, 2018

13425719 (P.T.A.B. Aug. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/425,719 03/21/2012 20350 7590 08/23/2018 KILPATRICK TOWNSEND & STOCKTONLLP Mailstop: IP Docketing - 22 1100 Peachtree Street Suite 2800 Atlanta, GA 30309 UNITED ST A TES OF AMERICA Peter Johnson 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. 93146-831609 (00011 OUS) 2480 EXAMINER NGUYEN, HIEP VAN ART UNIT PAPER NUMBER 3686 NOTIFICATION DATE DELIVERY MODE 08/23/2018 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): ipefiling@kilpatricktownsend.com KTSDocketing2@kilpatrick.foundationip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PETER JOHNSON Appeal2017-005345 Application 13/425,719 1 Technology Center 3600 Before DENISE M. POTHIER, JASON J. CHUNG, and JAMES W. DEJMEK, Administrative Patent Judges. DEJMEK, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. Â§ 134(a) from a Final Rejection of claims 4, 6-11, 14, 15, 17-19, 23, and 27-30. Appellant has canceled claims 1-3, 5, 12, 13, 16, 20-22, and 24--26. Br. 20-23. We have jurisdiction over the remaining pending claims under 35 U.S.C. Â§ 6(b ). We affirm. 1 Appellant identifies Clinithink Limited as the real party in interest. Br. 3. Appeal2017-005345 Application 13/425,719 STATEMENT OF THE CASE Introduction Appellant's disclosed and claimed invention relates to "enabling real- time, automated interpretation of clinical narratives ... achieved by translating narrative text into a clinical terminology structural representation." Spec. ,r 16. According to the Specification, a known clinical terminology is SNOMED CT (Systemized Nomenclature of Medicine - Clinical Terms). Spec. ,r,r 5, 16. Appellant further describes SNOMED CT as defining clinical "concepts" and mapping the concepts to a ConceptID. Spec. ,r 17. If a clinical concept directly maps to a ConceptID, this is referred to as a pre-coordinated concept. Spec. ,r 18. Appellant further discloses SNOMED CT also provides for post-coordination, which "allows pre-coordinated concepts to be combined according to description logic." Spec. ,r 18. Additionally, according to the Specification, SNOMED CT concepts are known to form a taxonomic structure, and the concepts are linked by relationships and may further be described by Descriptions (which also may be divided into Fully Separated Names, Preferred Terms, and Synonyms). Spec. ,r,r 19-20. Claim 23 is representative of the subject matter on appeal and is reproduced below: 23. A method comprising: receiving a freeform clinical narrative by a computer system from a client device; using the computer system, translating the clinical narrative into a structural representation; and outputting the structural representation from the computer system to a user interface output device, wherein: 2 Appeal2017-005345 Application 13/425,719 the structural representation is encoded according to a clinical reference terminology; the step of translating the clinical narrative into a structural representation includes determining a structural representation on the basis of legal expressions defined according to the clinical reference terminology, wherein the computer system uses metadata to define legal expressions of the clinical reference terminology, wherein the legal expressions are defined according to at least one rule of a Machine Readable Concept Model (MRCM), wherein translating the clinical narrative into a structural representation comprises: defining a first search window based on a first noun in the clinical narrative; identifying a clinical concept in the search window using a lookup performed on a collection of words basis; defining a second search window based on a second noun in the clinical narrative, wherein the second search window includes a portion of the clinical narrative; using a lemmatization dictionary to find a lemma value for the second noun in the second search window of the clinical narrative, wherein using the lemmatization dictionary to find the lemma value for the second noun compnses: tokenizing the portion of the clinical narrative included in the second search window such that a token is associated with the second noun; comparing the token associated with the second noun to a lemmatized index of clinical terminology; and assigning a lemma value to the second noun when the token associated with the second noun matches the lemmatized index; and the structural representation corresponds to a valid post-coordinated expression of the clinical reference terminology. 3 Appeal2017-005345 Application 13/425,719 The Examiner's Rejection2 Claims 4, 6-11, 14, 15, 17-19, 23, and 27-30 stand rejected under 35 U.S.C. Â§ 101 as being directed to patent-ineligible subject matter. Final Act. 2--4. ANALYSIS 3 Appellant disputes the Examiner's conclusion that the pending claims are directed to patent-ineligible subject matter under 35 U.S.C. Â§ 101. Br. 12-17. Appellant argues the Examiner erred in concluding "that the additional elements of the pending claim[ s] do not amount to significantly more than the judicial exception." Br. 12. Specifically, Appellant argues the pending claims: (i) provide a technical improvement over current technology; (ii) provide a technical solution to a problem arising in computers; and (iii) are not broadly preemptive. Br. 14--16. 4 In particular, 2 The Examiner had rejected claims 4, 6-11, 14, 15, 17-19, 23, and 27-30 under 35 U.S.C. Â§ I03(a) as being unpatentable over Montyne et al. (US 2012/0212337 Al; Aug. 23, 2012) ("Montyne"), Carlgren et al. (US 5,099,426; Mar. 24, 1992) ("Carlgren"); and Haskell (US 2005/0027566 Al; Feb. 3, 2005). Final Act. 4--13. The Examiner has withdrawn the rejection under 35 U.S.C. Â§ I03(a). Ans. 4--13. Therefore, we do not reach the merits of the withdrawn rejection under 35 U.S.C. Â§ I03(a) in this Decision. 3 Throughout this Decision, we have considered the Appeal Brief, filed July 15, 2016 ("Br."); the Examiner's Answer, mailed November 29, 2016 ("Ans."); and the Final Office Action, mailed February 19, 2016 ("Final Act."), from which this Appeal is taken. Appellant did not file a Reply Brief. 4 Appellant directs our attention to the holdings in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014); Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016), and BASCOM Global Internet Servs. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016). Br. 13-14. 4 Appeal2017-005345 Application 13/425,719 Appellant asserts Natural Language Processing (NLP) is a branch of computer science technology and, accordingly, arises out of computers. Br. 14--15. Appellant contends the improvement and claimed solution relate to NLP. Br. 14--15. The Supreme Court's two-step framework guides our analysis. Alice Corp. Pty. Ltd. v. CLS Banklnt'l, 134 S. Ct. 2347, 2355 (2014). If a claim falls within one of the statutory categories of patent eligibility (i.e., a process, machine, manufacture or composition of matter) then the first inquiry is whether the claim is directed to one of the judicially recognized exceptions (i.e., a law of nature, a natural phenomenon, or an abstract idea). Alice, 134 S. Ct. at 2355. If so, the second step is to determine whether any element, or combination of elements, amounts to significantly more than the judicial exception. Alice, 134 S. Ct. at 2355. Although the independent claims each broadly fall within the statutory categories of patentability, the Examiner concludes the claims are directed to a judicially recognized exception-i.e., an abstract idea. Final Act. 2--4. In particular, the Examiner concludes the claims are directed to "receiving a freeform clinical narrative and translating the clinical narrative into the encoded structural representation on [the] basis of legal expressions Although Appellant contends these cases support the conclusion of patent eligibility if the claims recite additional elements that amount to significantly more than the judicial exception (i.e., abstract idea), we note the court in Enfzsh concluded the pending claims were "directed to an improvement in the functioning of a computer" and were not directed to an abstract idea under step one of the Alice analysis. See Enfish, 822 F.3d at 1338-39. Therefore, Appellant's arguments pertaining to Enfish under step two of the Alice analysis appear to be misplaced. Nonetheless, we determine the present claims are directed to an abstract idea and do not amount to significantly more than the abstract idea. 5 Appeal2017-005345 Application 13/425,719 according to the clinical reference." Ans. 14 (emphasis omitted); Final Act. 2. Further, the Examiner explains the claims do not recite additional elements that amount to significantly more than the abstract idea itself. Final Act. 3; Ans. 15-16. Rather, the Examiner finds the claims recite conventional computers and devices performing functions that are well- understood, routine, and conventional activities previously known in the relevant industry. Final Act. 3 (citing Spec. i-fi-fl38-140, 143); Ans. 16. Instead of using a definition of an abstract idea, "the decisional mechanism courts now apply is to examine earlier cases in which a similar or parallel descriptive nature can be seen-what prior cases were about, and which way they were decided." Amdocs (Isr.) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) (citing Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016)); accord United States Patent and Trademark Office, July 2015 Update: Subject Matter Eligibility 3 (July 30, 2015), https://www.uspto.gov/sites/default/files/ documents/ieg-july-2015-update.pdf (instructing Examiners that "a claimed concept is not identified as an abstract idea unless it is similar to at least one concept that the courts have identified as an abstract idea."). As part of this inquiry, we must "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 Tex., LLC v. DirecTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016). Our reviewing court has concluded that abstract ideas include the concepts of collecting data, recognizing certain data within the collected data set, and storing the data in memory. Content Extraction & Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343, 1347 (Fed. Cir. 2014); see 6 Appeal2017-005345 Application 13/425,719 also Smart Sys. Innovations, LLC v. Chicago Transit Authority, 873 F.3d 1364, 1372 (Fed. Cir. 2017) (concluding "claims directed to the collection, storage, and recognition of data are directed to an abstract idea"). Additionally, the collection of information and analysis of information ( e.g., recognizing certain data within the dataset) are also abstract ideas. Elec. Power, 830 F.3d at 1353. Similarly, simply "collecting, displaying, and manipulating data" is an abstract idea. Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1340 (Fed. Cir. 2017); see also SAP Am., Inc. v. InvestPic, LLC, 890 F.3d 1016, 1021 (Fed. Cir. 2018) ("merely presenting the results of abstract processes of collecting and analyzing information ... is abstract as an ancillary part of such collection and analysis") ( quotations omitted). Moreover, our reviewing court recently has concluded that acts of parsing, comparing, storing, and editing data are abstract ideas. Berkheimer v. HP Inc., 881 F.3d 1360, 1366 (Fed. Cir. 2018). Further, merely combining several abstract ideas does not render the combination any less abstract. RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017) ("Adding one abstract idea (math) to another abstract idea ... does not render the claim non-abstract."); see also FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir. 2016) ( determining the pending claims were directed to a combination of abstract ideas). Here, Appellant's claims are directed to creating a structural representation of a freeform clinical narrative. The clinical narrative is received by a computer system from a client device. Once received, the data (i.e., freeform clinical narrative) is parsed and analyzed to identify 7 Appeal2017-005345 Application 13/425,719 corresponding concepts and clinical terminology. The structured representation is encoded according to a valid expression of the clinical terminology. The steps of receiving data (i.e., a freeform clinical narrative), defining a search window (i.e., a "sequence of tokens [(words)] to try to match against the SNOMED CT data;" see Spec. ,r,r 74, 80) from the data and tokenizing a portion of the data are similar to the collection and parsing of data, concluded to be abstract ideas. See Content Extraction, 776 F.3d at 1347; Elec. Power, 830 F.3d at 1353; Berkheimer, 881 F.3d at 1366. Further, identifying a clinical concept by performing a lookup on a collection of words basis to translate the clinical narrative to a clinical reference terminology is similar to the abstract idea of "creating an index and using that index to search for and retrieve data." Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315, 1327 (Fed. Cir. 2017). Similarly, comparing a token to an index of clinical terminology is also abstract. See Berkheimer, 881 F.3d at 1366; Intellectual Ventures, 850 F.3d at 1327 ("organizing and accessing records through the creation of an index- searchable database, includes longstanding conduct that existed well before the advent of computers and the Internet"). Additionally, the outputting of the translated data (i.e., a structural representation of the freeform clinical data) to a user interface is similar to the abstract idea of displaying data. See Elec. Power, 830 F.3d at 1353; see also FairWarning IP, 839 F.3d at 1093 ("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.") ( citation omitted). Accordingly, we conclude the character as a 8 Appeal2017-005345 Application 13/425,719 whole of the claims is directed to the abstract idea of creating a structural representation of a freeform clinical narrative. Because we determine the claims are directed to an abstract idea or combination of abstract ideas, we proceed to analyzing the claims under step two of Alice to determine if there are additional limitations that individually, or as an ordered combination, ensure the claims amount to "significantly more" than the abstract idea. Alice, 134 S. Ct. at 2355 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71-73, 78-79 (2012)). The implementation of the abstract idea involved must be "more than [the] performance of 'well-understood, routine, [and] conventional activities previously known to the industry.'" Content Extraction, 77 6 F .3d at 1347--48 (quoting Alice, 134 S. Ct. at 2359) (alteration in original). "Whether something is well-understood, routine, and conventional to a skilled artisan at the time of the patent is a factual determination." Berkheimer, 881 F.3d at 1369. Appellant does not dispute the Examiner's findings that the claim elements recite generic computing elements or devices performing functions that are well-understood, routine, and conventional. See Br. passim; Final Act. 3 (identifying functions ( or acts), inter alia, of receiving, outputting, and comparing); Ans. 15-16. The Examiner's findings are consistent and support by Appellant's description of the system environment to implement the disclosed and claimed invention. See Spec. ,r,r 133-143, Figs. 26, 27; see also buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) ("That a computer receives and sends the information over a network-with no further specification-is not even arguably inventive."). Rather Appellant asserts the claimed invention provides a technical improvement 9 Appeal2017-005345 Application 13/425,719 over current technology and solves a technical issue arising in computers. Br. 14--15. Contrary to Appellant's assertions, the claims (including dependent claims 11 and 14) do not recite an improvement to the translation of a freeform clinical narrative into a structural representation according to a clinical reference terminology and do not amount to significantly more than the abstract idea itself. Cf Intellectual Ventures, 850 F.3d 1329 (explaining the claims do not sufficiently recite how using the claimed invention leads to an improvement in the asserted technology). Additionally, we disagree that the problem is necessarily rooted in computer technology. Rather, "the focus of the claims is not on ... an improvement to computers, but on certain independently abstract ideas that use computers as tools." Elec. Power, 830 F.3d at 1354; see also Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012) ("[T]he fact that the required calculations could be performed more efficiently via a computer does not materially alter the patent eligibility of the claimed subject matter."). Additionally, Appellant's reliance on DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014) is also unavailing. See Br. 13. In DDR, the court concluded the claims were patent eligible under step two of the Alice because "the claimed solution amount[ ed] to an inventive concept for resolving [a] particular Internet-centric problem," i.e., a challenge unique to the Internet. DDR Holdings, 773 F.3d at 1257-59. However, according to the Federal Circuit, "DDR Holdings does not apply when ... the asserted claims do not 'attempt to solve a challenge particular to the Internet."' Smart Sys. Innovations, 873 F.3d at 1375 ( quoting In re 10 Appeal2017-005345 Application 13/425,719 TL! Commc'ns LLC Patent Litig., 823 F.3d 607,613 (Fed. Cir. 2016). Contrary to Appellant's assertions, as discussed supra, the claims here do not address a similar problem and do not contain a similar inventive concept. To the extent Appellant contends the claims are not broadly preemptive (see Br. 15-16), we are unpersuaded of Examiner error. "'[W]hile preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility."' Fair Warning IP, 839 F.3d at 1098 (quoting Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015); see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362-63 (Fed. Cir. 2015) ("[T]hat the claims do not preempt all price optimization or may be limited to price optimization in the e-commerce setting do not make them any less abstract."). Further, "[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, 788 F.3d at 1379. For the reasons discussed supra, we are unpersuaded of Examiner error. Accordingly, we sustain the Examiner's rejection under 35 U.S.C. Â§ 101 of independent claim 23. For similar reasons, we also sustain the Examiner's rejection of independent claim 29, which recites similar limitations and was not argued separately. See Br. 12; see also 37 C.F.R. Â§ 4I.37(c)(l)(iv) (2015). Additionally, we sustain the Examiner's rejection of claims 4, 6-10, 15, 17-19, 23, 27, 28, and 30, which depend directly or indirectly therefrom and were not argued separately. See Br. 12; see also 37 C.F .R. Â§ 41.37 ( c )(1 )(iv). Appellant recites the limitations of claims 11 and 14, but does not otherwise provide separate arguments of patentability 11 Appeal2017-005345 Application 13/425,719 for these claims. See Br. 16. Thus, we are not apprised of Examiner error and, accordingly, sustain the Examiner's rejection of these claims. See 37 C.F.R. Â§ 4I.37(c)(l)(iv) ("A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim."). DECISION We affirm the Examiner's decision rejecting claims 4, 6-11, 14, 15, 17-19, 23, and 27-30 under 35 U.S.C. Â§ 101. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l)(iv). See 37 C.F.R. Â§ 41.50(Â±). AFFIRMED 12