Ex Parte Koll

Patent Trial and Appeal Board

Aug 30, 2016

13036841 (P.T.A.B. Aug. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/036,841 02/28/2011
24208 7590
Robert Plotkin, P,C,
1500 District Ave.
Burlington, MA 01803
09/01/2016
FIRST NAMED INVENTOR
Detlef Koll
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.
M0002-1030 5725
EXAMINER
LAM, ELIZA ANNE
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
09/01/2016 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):
RPLOTKIN@RPLOTKIN.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DETLEF KOLL
Appeal2016-005258 1
Application 13/036,841 2
Technology Center 3600
Before MICHAEL C. ASTORINO, BRUCE T. WIEDER and
TARA L. HUTCHINGS, Administrative Patent Judges.
HUTCHINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1, 3, 4, 7, 8, 10-17, 19, 20, 23, 24, and 26-32. We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Our decision references Appellant's Appeal Brief ("Appeal Br.," filed
Sept. 23, 2015) and Reply Brief ("Reply Br.," filed Apr. 18, 2016), and the
Examiner's Answer ("Ans.," mailed Mar. 11, 2016) and Final Office Action
("Final Act.," mailed May 27, 2015).
2 Appellant identifies MModal IP, LLC, as the real party in interest. Appeal
Br. 1.
Appeal2016-005258
Application 13/036,841
CLAIMED INVENTION
Appellant's claimed invention is "directed to techniques for updating
electronic medical records (EMRs) quickly, accurately, and with minimal
human effort." Spec. i-f 16.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal:
1. A method performed by at least one computer processor
executing computer program instructions stored on at least one
non-transitory computer-readable medium, wherein the
computer program instructions are executable by the at least one
computer processor to perform a method comprising:
( 1) extracting a fact from a report, wherein the fact relates
to a particular concept;
(2) identifying, in an electronic record, a discrete data
element relating to the particular concept;
(3) reconciling the extracted fact with the discrete data
element, comprising:
(3) (a) (i) identifying a value of the extracted fact;
(ii) identifying a value of the discrete data
element;
(iii) analyzing the value of the extracted fact
and the value of the discrete data element, the
analyzing including at least one of: determining
correctness of the value of the extracted fact and of
the value of the discrete data element, comparing
specificity of the value of the extracted fact and of
the value of the discrete data element, comparing
recency of the value of the extracted fact and the
value of the discrete data element, and determining
whether to merge the value of the extracted fact and
the value of the discrete data element; and
(iv) generating a proposed reconciled fact
that reconciles, based upon the analysis, a conflict
between the value of the extracted fact and the value
of the discrete data element;
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(3) (b) providing, to a human user, a proposed
reconciled fact for storage in at least one of the discrete
data element and the report; and
(3) ( c) receiving input from the human user
indicating acceptance of the proposed reconciled fact;
( 4) updating at least one of the identified discrete data
element and the report based on the result of the reconciliation,
comprising storing the proposed reconciled fact in at least one of
the identified discrete data element and the report in response to
receiving the input from the human user indicating acceptance of
the proposed reconciled fact; and
( 5) storing text in the electronic record based on the report.
REJECTIONS
Claims 1, 3, 4, 7, 8, 10-17, 19, 20, 23, 24, and 26-32 are rejected
under 35 U.S.C. § 101 as directed to nonstatutory subject matter.
Claims 1, 3, 4, 10-17, 19, 20, and 26-32 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Johnson (US 5,664,109, iss. Sept. 2, 1997),
Crockett (US 8,392,216 B2, iss. Mar. 5, 2013), and Garrett
(US 8,359,297 B2, iss. Jan. 22, 2013). 3
Claims 7, 8, 23, and 24 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Johnson, Crockett, Garrett, and Green, Jr.
(US 8,050,938 Bl, iss. Nov. 1, 2011).4
3 We treat as inadvertent error the Examiner's identification of canceled
claims 2, 5, 6, 18, 21, and 22 among the claims rejected under 3 5 U.S. C.
§ 103(a). Final Act. 3.
4 We treat as inadvertent error the Examiner's identification of canceled
claims 9 and 25 among the claims rejected under 35 U.S.C. § 103(a). Id.
at 8.
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Application 13/036,841
ANALYSIS
Non-Statutory Subject Matter
Independent Claims 1 and 17, and Dependent Claims 3, 4, 7, 10--16, 19, 20,
23, and 26--32
Appellant argues claims 1, 3, 4, 7, 10-17, 19, 20, 23, and 26-32 as a
group. We select claim 1 as representative. The remaining claims stand or
fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
Claim 1 recites a method comprising five steps: (1) extracting a fact
relating to a particular concept from a report, (2) identifying a discrete data
element in an electronic record relating to the particular concept, (3)
reconciling the extracted fact with the discrete data element, ( 4) updating at
least one of the identified discrete data element and the report based on the
result of the reconciliation, and ( 5) storing text in the electronic record based
on the report. The five steps result in an electronic record that is updated
(i.e., "storing text") based on a report.
Appellant argues that the Examiner erred in rejecting claim 1 under 3 5
U.S.C. § 101 because the Examiner failed to "identif1y] a judicial exception
recited in the claim[.]" Appeal Br. 24--25 (citing 2014 Interim Guidance on
Patent Subject Eligibility, 79 Fed. Reg. 74,618 (Dec. 16, 2014), available at:
https://www.federalregister.gov/articles/2014/12/16/2014-29414/2014-
interim-guidance-on-patent-subject-matter-eligibility); see also Reply Br. 1-
3. In this regard, Appellant objects to the Examiner's characterization of the
claims as being directed to the abstract idea of "comparing new and stored
information and using rules to identify options," because claim 1 does not
recite this language. Appeal Br. 24--25. Additionally, Appellant charges
that the Examiner's rejection "merely point[ s] out that the only hardware
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Application 13/036,841
recited in the claim is generic computer hardware," thereby failing to present
a prima facie rejection under 35 U.S.C. § 101. Id. at 25-26. We are not
persuaded by Appellant's arguments.
In rejecting the claims under 35 U.S.C. § 101, the Examiner finds, in
essence, that claim 1 is directed to the abstract idea of data gathering and
processing. See Ans. 2 ("the concept of 'comparing new and stored
information and using rules to identify options' is described by the
extracting, analyzing and providing steps in claims 1 and 17").
It is evident from precedent that claim 1 is the sort of data gathering
and processing claim that is directed to an abstract idea under step one of the
test outlined in Alice Corp. Pty. Ltd. v. CLS Banklnt'l, 134 S. Ct. 2347
(2014). See, e.g., Electric Power Group, LLC v. Alstom S.A., No 2015-1778,
2016 WL 4073318 at *3 (Fed. Cir. Aug. 1, 2006) (claims generally reciting
"collecting information, analyzing it, and displaying certain results of the
collection and analysis" are a familiar class of claims "directed to a patent
ineligible concept"); In re TL! Communications LLC Patent Litigation, 823
F.3d 607, 611 (Fed. Cir. 2016) (claims drawn to classifying an image and
storing the image based on classification is directed to an abstract concept);
Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat 'l Ass 'n,
776 F.3d 1343, 1347 (Fed. Cir. 2014) (claims for extracting data from
documents, recognizing specific information, and storing that information
were directed to patent-ineligible abstract ideas); Digitech Image Techs.,
LLC v. Elecs. For Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014).
Appellant argues that claim 1 is not directed to an abstract idea
because it is rooted in computer technology. Appeal Br. 22-24 (citing DDR
Holdings v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014)). Specifically,
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Appellant contends that claim 1 "overcome[ s] a problem specifically arising
in the realm of electronic medical records stored on computing devices and
including discrete data elements (e.g., elements encoded in a format that
makes their meaning understandable to and processable by a computer)." Id.
at 23.
But in stark contrast to the claims at issue in DDR Holdings, which
resulted in overriding conventional functioning of Internet hyperlinks (see
DDR Holdings, 773 F.3d at 1257-58), Appellant's claimed invention is
directed to an automation of a manual business process. See, e.g., Spec.
i-fi-1 2-7 (describing the "tedious, time-consuming, and error prone" process
of manually entering and updating data in an electronic record); see also id.
i18 (characterizing Appellant's invention as "[a]n automated system [that]
updates electronic medical records (EMRs) based on dictated reports,
without requiring manual data entry"). Moreover, while the invention
employs discrete data elements, the Specification describes using known
techniques for encoding discrete data elements and for extracting facts. See
id. i-fi-126-31. Additionally, the Specification describes using conventional
computer components and technology to implement the invention. See id.
,-r,-r 78-80.
Thus, we agree with the Examiner (see Ans. 3) that the solution
provided by Appellant's claim 1 is not rooted in specific computer
technology, but rather recites generalized steps relating to a business process
for which a computer is used in its ordinary capacity. Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016) ("the first step in
the Alice inquiry ... asks whether the focus of the claims is on the specific
asserted improvement in computer capabilities ... or, instead, on a process
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that qualifies as an 'abstract idea' for which computers are invoked merely
as a tool.")
Given that claim 1 is directed to an abstract idea, we next consider
whether there is an inventive concept, defined by an element or combination
of elements in claim 1, which is significantly more than the abstract idea of
updating electronic records. See Alice, 134 S. Ct. at 2355 (citation omitted).
The Examiner finds, and we agree, that no such inventive concept exists.
Ans. 2-3 (finding that the additional elements in the claims include generic
computer components that perform well-understood, routine, and generic
computer functions).
Appellant restates limitations (1 }-(3)(a)(iv) of claim 1 and asserts that
these limitations add significantly more to the claim. Appeal Br. 28-29.
However, as noted by the Examiner (Ans. 10), these steps are part of the
abstract idea and, thus, do not constitute additional elements. See Alice, 134
S. Ct. at 2359 (the second step of the Alice test asks "whether the claims ...
do more than simply instruct the practitioner to implement the abstract idea
here on a generic computer").
Appellant also argues that generation of a reconciled fact, as recited in
limitation (3)(a)(iv) of claim 1, transforms a particular article (i.e., a value of
a fact and a value of a discrete data element) into a different state or thing
(i.e., the reconciled fact). Appeal Br. 29. However, transformation of one
type of electronic data into another type of electronic data does not satisfy
the transformation prong of the machine-or-transformation test. See
Cybersource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir.
2011) ("The mere manipulation or reorganization of data ... does not satisfy
the transformation prong.").
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Appellant argues that the claims do not "tie up" an entire field.
Appeal Br. 28. However, that claim 1 does not preempt an entire field does
not make the claim any less abstract. See OIP Technologies, Inc. v.
Amazon.com, Inc., 788 F.3d. 1359, 1362---63 (Fed. Cir. 2015).
Appellant argues that the Examiner fails to point to any of the
individual elements of the claims and explain why those elements do not
amount to significantly more than the alleged abstract idea. Appeal Br. 29.
However, the Examiner finds that the only portion of the claim that is not
part of the abstract idea relates to generic computing hardware performing
generic computer functions, which is insufficient to confer patent eligibility.
Ans. 10; see also id. at 2-3.
None of Appellant's arguments is persuasive of Examiner error in
finding that the claim 1 is directed to patent ineligible subject matter.
In view of the foregoing, we sustain the Examiner's rejection of
independent claim 1 under 35 U.S.C. § 101. We also sustain the rejection of
claims 3, 4, 7, 10-17, 19, 20, 23, and 26-32, which fall with claim 1.
Dependent Claims 8 and 24
Claim 8 ultimately depends from claim 1 and further recites "( 6)
before ( 1 ), transcribing a spoken audio stream to produce the report, wherein
the report represents content of the spoken audio stream" and "wherein ( 6)
comprises using an automatic speech recognizer to transcribe the spoken
audio stream to produce the report." Claim 24 ultimately depends from
claim 17, and recites similar language.
Appellant additionally argues that dependent claims 8 and 24 each is
rooted in computer technology to overcome a problem arising in the realm
of using an automatic speech recognizer to transcribe an audio stream to
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produce a report, from which facts are extracted and reconciled. Appeal Br.
31-32. However, the claimed invention relies on known techniques
described in Fritsch (US 7,584,103 B2, iss. Sept. 1, 2009) for automatically
generating a report based on speech, including identification of relevant
concepts. Spec. i-fi-126, 29; see also Fritsch, Abstract. The claimed invention
also relies on techniques disclosed in Koll (US 7,716,040 B2, iss. May 11,
2010) for extracting facts and for providing a verification process. Spec.
i-fi-131, 39; see also Koll, Abstract. We see nothing indicating that claims 8
and 24 recite more than generalized steps relating to a business process for
which a computer is used in its ordinary capacity. Nor do we otherwise see
anything indicating that claims 8 and 24 are directed to an improvement in
computer capabilities.
The remainder of Appellant's arguments with respect to dependent
claims 8 and 24 are substantially similar to those advanced with respect to
independent claim 1, and thus are unpersuasive for the same reasons set
forth above with respect to claim 1. See Appeal Br. 30-38. Therefore, we
sustain the Examiner's rejection of dependent claims 8 and 24 under 35
U.S.C. § 101.
Obviousness
Appellant argues independent claims 1 and 17 together. See Appeal
Br. 38. We select claim 1 as representative. Claim 17 stands or falls with
claim 1. 37 C.F.R. § 41.37( c )(1 )(iv).
We are not persuaded by any of Appellant's arguments that the
Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a), at least
because Appellant argues each reference separately when the rejection is
based on the combination of Johnson, Crockett, and Garrett. Appeal Br. 9-
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11; see Jn re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) ("Non-
obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references.").
For example, Appellant argues that the Examiner erred in finding
Johnson's disclosure corresponds to limitation (3)(a)(iv) of claim 1under35
U.S.C. § 103(a), because Johnson "merely discloses that differences may be
identified but leaves solely to the discretion of the human user any decision
regarding whether or how to reconcile the identified differences." Appeal
Br. 41. Appellant asserts that because Johnson does not disclose limitation
(3)(a)(iv), Johnson fails to teach or suggest limitations (4) and (5). Id. at 42.
Appellant's arguments are not persuasive at least because the Examiner
relies on Garrett for limitation (3)(a)(iv). See Ans. 11; see also Final Act. 5.
Appellant asserts that "Johnson lacks any teaching or suggestion of
concepts as described in the specification," and therefore fails to teach or
suggest limitations (1), (2), (3)(a)(iii), (3)(a)(iv), (4), and (5). Appeal Br. 42.
Appellant's assertion is not persuasive at least because Appellant does not
present any persuasive argument or technical reasoning to explain why the
Examiner erred in finding that Johnson's extracted patient demographic
information relates to a particular concept. See Final Act. 3. As such,
Appellant's assertion does not rise to the level of a substantive argument for
patentability. See 37 C.F.R. § 41.37(c)(l)(iv).
Appellant argues that Garrett "can avoid analyzing the specific values
of data elements and instead look to the priority of the source .... " Appeal
Br. 43. Appellant charges that this description "only suggests resolving
conflicts by determining a level of priority of a data source associated with a
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value of a data element, not by actually analyzing the value of the data
element itself." Id. Appellant also asserts that Garrett, therefore, "does not
teach or suggest analyzing the conflicting values and generating a proposal
for reconciling the conflict," i.e., limitations (3)(a)(iii) and (3)(a)(iv). Id.
Appellant's argument is not persuasive because comparing values to see if
they conflict, as taught by Garrett, meets the claim language "analyzing the
value of the extracted fact and the value of the discrete data element, the
analyzing including at least one of: determining the correctness of the value
of the extracted fact and of the value of the discrete data element," as recited
in claim 1, limitation (3)(a)(iii). Elaborating further, values that do not
match indicate a lack of correctness in at least one of the values. Moreover,
having a rule to prioritize a particular data source when a conflict is
identified meets the claim language for "generating a proposed reconciled
fact," as recited in claim 1, limitation (3)(a)(iv).
Appellant asserts that Garrett does not teach or suggest limitations ( 1)
and (2), and therefore fails to teach or suggest limitations recited at
limitations (1 ), (2), (3)(a)(i), (3)(a)(ii), (3)(a)(iii), (3)(a)(iv), ( 4), and (5). Id.
at 44. Appellant's arguments are not persuasive at least because the
Examiner relies on Johnson for limitations (1) and (2). See Final Act. 3.
Appellant argues that Crockett "fails to teach or suggest any process
for generating and providing a human user with a proposed reconciled fact
that reconciles a conflict between a value of an extracted fact and a value of
a discrete data element, as recited in the pending claims," i.e., limitations
(3)(a)(iv) and (3b). Appeal Br. 44. Appellant's argument is not persuasive
of Examiner error because the Examiner relies on Garrett for limitation
(3)(a)(iv) and Crocket for limitations (3)(b) and (3)( c ). See Final Act. 4--5.
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We agree with the Examiner that providing a name and probability
associated with a known patient for review by a physician, and the physician
indicating acceptance, as described by Crocket, meets limitations (3)(b) and
(3)(c). Id.
Appellant summarily asserts that Crockett does not teach or suggest
limitations (1), (2), (3)(a)(i), (3)(a)(ii), (3)(a)(iii), (3)(a)(iv), (4), and (5).
Appeal Br. 44--45. Appellant's arguments are not persuasive at least
because the Examiner does not rely on Crockett for any of these limitations.
In view of the foregoing, we sustain the Examiner's rejections of
claim 1 and claim 17, which falls with claim 1, under 35 U.S.C. § 103(a).
We also sustain the rejections under 35 U.S.C. § 103(a) of dependent claims
3, 4, 7, 8, 10-16, 19, 20, 23, 24, and 26-32, which are not argued separately.
Appeal Br. 38.
DECISION
The Examiner's rejection of claims 1, 3, 4, 7, 8, 10-17, 19, 20, 23, 24,
and 26-32 under 35 U.S.C. § 101 is affirmed.
The Examiner's rejections of claims 1, 3, 4, 7, 8, 10-17, 19, 20, 23,
24, and 26-32 under 35 U.S.C. § 103(a) are 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).
AFFIRMED
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