Ex Parte Kuo

Patent Trial and Appeal Board

Dec 26, 2018

14272186 (P.T.A.B. Dec. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/272,186 05/07/2014
69814 7590 12/28/2018
BROOKS, CAMERON & HUEBSCH , PLLC
1201 Marquette Avenue South
Suite 400
MINNEAPOLIS, MN 55403
FIRST NAMED INVENTOR
EricE. Kuo
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.
ll l l.ALG.US.Cl/1300.011-2 3419
EXAMINER
PAULSON, SHEETAL R.
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
12/28/2018 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):
Align.Docketing@bipl.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ERIC E. KUO
Appeal2017-008175
Application 14/272, 186
Technology Center 3600
Before JOSEPH L. DIXON, MAHSHID D. SAADAT, and
JOHN P. PINKERTON, Administrative Patent Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1-26. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 According to Appellant, the real party in interest is Align Technology, Inc.
App. Br. 3.
Appeal2017-008175
Application 14/2 72, 186
STATEMENT OF THE CASE
Introduction
Appellant's Specification describes "devices, files, mediums, and
methods for keeping medical information private." Spec. 1: 10-11.
Representative Claim
Representative claim 1 under appeal reads as follows;
1. A personal data file on a computing device readable
medium having executable instructions which can be executed
by a processor to cause a computing device to:
designate personal information about a subject of the
personal data file, where the personal data file includes a
plurality of personal information data fields;
display a patient image of at least a portion of a patient's
body on a display of a computing device;
define a first portion of the patient image as a privacy
reg10n;
receive a user selection via the computing device to hide
the first portion of the patient image; and
hide the first portion of the patient image using the
defined privacy region and leave a second portion of the patient
image visible to a viewer of the patient image, where the hidden
first portion of the patient image is viewable to the viewer by
entry of a pass code by the user into the computing device.
Rejections on Appeal
The Examiner rejected claims 1-26 under 35 U.S.C. § 101 for being
directed to patent-ineligible subject matter. See Final Act. 2.
The Examiner rejected claims 1-26 under 35 U.S.C. § I03(a) as
unpatentable over Knaus (US 2002/0004727 Al; pub. Jan. 10, 2002),
Uemura (US 2008/0013727 Al; pub. Jan. 17, 2008), and Eida (US
2003/0120517 Al; June 26, 2003). See Final Act. 3-9.
2
Appeal2017-008175
Application 14/2 72, 186
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellant's
arguments that the Examiner has erred. We disagree with Appellant's
contention that the Examiner erred. Instead, we concur with the conclusions
reached by the Examiner. Except as noted below, we adopt as our own the
reasoning set forth by the Examiner in the Final Office Action and the
Examiner's Answer.
REJECTION UNDER 35 USC§ 101
Principles of Law
Under 35 U.S.C. § 101, a patent may be obtained "for any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." The Supreme Court has "long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable." Alice Corp. Pty.
Ltd. v. CLS Bankint'l, 573 U.S. 208, 215-16 (2014) (quotingAss'nfor
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
The Supreme Court in Alice reiterated the two-step framework previously
set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc.,
566 U.S. 66 (2012), "for distinguishing patents that claim laws of nature,
natural phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts." Alice, 573 U.S. at 2.
The first step in that analysis is to "determine whether the claims at
issue are directed to one of those patent-ineligible concepts," such as an
abstract idea. Id. The Court acknowledged in Mayo that "all inventions at
some level embody, use, reflect, rest upon, or apply laws of nature, natural
phenomena, or abstract ideas." Mayo, 566 U.S. at 71. Therefore, we look to
3
Appeal2017-008175
Application 14/2 72, 186
whether the claims focus on a specific means or method that improves the
relevant technology or are instead directed to a result or effect that itself is
the abstract idea and otherwise merely recite generic processes and
machinery. See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336
(Fed. Cir. 2016). If the claims are not directed to an abstract idea, the
inquiry ends. Otherwise, the inquiry proceeds to the second step, in which
the elements of the claims are considered "individually and 'as an ordered
combination' to determine whether the additional elements 'transform the
nature of the claim' into a patent-eligible application." Alice, 573 U.S. at
217 (quoting Mayo, 566 U.S. at 79, 78).
Alice/Mayo - Step 1
The Examiner determines claim 1 "is directed to non-statutory subject
matter because the claim( s) as a whole, considering all claim elements both
individually and in combination, do not amount to significantly more than an
abstract idea." Final Act. 2. The Examiner further determines "[t]he claims
are directed to the abstract idea of organizing personal data files," which is
patent-ineligible. See id.
Appellant contends claim 1 is not directed to an abstract idea under
35 U.S.C. § 101 because the claim, and similarly the other independent
claims 8 and 16, recite "more than merely the abstract idea of' ...
organizing a personal data file ... "' App. Br. 7. Appellant further asserts
"[ c ]laims 1, 8, and 16 further recite additional features that are sufficient to
transform the claimed subject matter into a patent-eligible application.
Alice, 134 S. Ct. at 2357." App. Br. 7-8.
4
Appeal2017-008175
Application 14/2 72, 186
The Examiner responds:
The abstract idea in independent claims is embodied in
the claims and is identified as: collecting personal data files
including images, defining privacy regions on the images, and
displaying the patient image with the hidden portions encrypted
with passcodes. These steps corresponds to concepts identified
as abstract ideas by the courts, such as "an idea of itself' as
referenced in Alice Corp. An example of "an idea of itself' is
the concept that is analogous to the court-defined abstract idea
in Electric Power Group in that it collects information
( collecting information regarding which portions to hide),
analyzes it ( analyzes the designation rules for the images), and
displays certain results ( displaying the blurred out portion
image to the user) of the collection and analysis.
Ans. 2-3.
Appellant contrasts the appealed claims with those in Electric Power
Group case and asserts claims 1, 8, and 16 "do go beyond requiring the mere
collection, analysis, and display of available information in a particular
field." Reply Br. 2-3. According to Appellant, the claims recite "more than
merely the abstract idea of 'collecting personal data files including images,
defining privacy regions on the images, and displaying the patient image
with the hidden portions encrypted with passcodes' ( as stated on Page 2 of
the Examiner's Answer)." Reply Br. 3.
We are unpersuaded by Appellant's arguments. Upon review of
Appellant's claims and Specification, and consistent with the Examiner's
findings, we agree with the Examiner's determination that the claims are
directed to the abstract idea of collecting and aggregating data to partially
display data while hiding parts of the data that is identified as private.
Obtaining and displaying patient data is substantially similar to the
economic practices that were deemed to be patent-ineligible subject matter
5
Appeal2017-008175
Application 14/2 72, 186
in Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed.
Cir. 2016) (collection and analysis of information); Classen
Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057 (Fed. Cir. 2011)
( collecting and comparing known information); CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011) ("[A] method that can
be performed by human thought alone is merely an abstract idea and is not
patent-eligible under§ 101."); and Intellectual Ventures I LLC v. Capital
One Bank (USA), 792 F.3d 1363, 1370 (Fed. Cir. 2015) (tailoring
information presented to a user based on particular information).
Further, collecting and aggregating data to make parts of the data
hidden from the user, as recited in claim 1, involve gathering and displaying
of data and selecting which part of the results are displayed based on
analyzing the data without any asserted inventive technology. See Electric
Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016)
("The 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.").
Thus, we agree with the Examiner's finding that claims 1, 8, and 16 are
directed to an abstract idea.
In light of the above, the Examiner correctly concluded that claims 1-
26 are directed to an abstract idea.
Alice/Mayo - Step 2
The Examiner determines each of the elements of claim 1 separately
and in combination does not amount to significantly more than "(i) mere
instructions to implement the idea on a computer, and/or (ii) recitation of
generic computer structure that serves to perform generic computer
6
Appeal2017-008175
Application 14/2 72, 186
functions that are well-understood, routine, and conventional activities
previously known to the pertinent industry." Final Act. 2. The Examiner
also determines"[ v ]iewed as a whole, these additional claim element(s) do
not provide meaningful limitation( s) to transform the abstract idea into a
patent eligible application of the abstract idea such that the claim( s) amounts
to significantly more than the abstract idea itself." Id.
Appellant contrasts the appealed claims with those in DDR Holdings,
LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014) and argues:
The claims recite a solution necessarily rooted in
computer technology to overcome a problem specifically
arising in the realm of computer networks, specifically the
problem of hiding identifying information of a clinical data file
before sending a clinical data file over an unsecured Internet
connection to retain the anonymity of the patient information
included in the clinical data file (e.g., maintaining doctor-
patient confidentiality).
Identical to DDR Holdings, the claims do not recite a
mathematical algorithm, nor do they recite fundamental
economic or longstanding commercial practice.
That is, just as DDR Holdings was directed to retaining
website visitors (e.g., maintain revenue for the host),
Appellant's claimed subject matter is directed toward a
processor causing a computing device to hide, using a privacy
region, a first portion of a patient image and leave a second
portion of the patient image visible to a viewer of the patient
image to maintain doctor-patient confidentiality, for example,
when sending a clinical data file including the patient image
over an unsecured Internet connection.
App. Br. 8. Additionally, Appellant points to page 13, lines 4--14, of the
Specification and asserts the solution provided in the claims "is necessarily
7
Appeal2017-008175
Application 14/2 72, 186
rooted in computer technology in order to overcome a problem specifically
arising in the realm of computer networks." App. Br. 9.
The Examiner responds that "while the claims require concrete,
tangible components such as a 'processor' and 'computing device,' the
specification makes clear that the recited components merely provide a
generic environment in which to carry out the abstract idea of displaying an
image with a hidden portion." Ans. 3. The Examiner finds the Specification
includes no technical details for the argued components and instead, refers to
their functionalities such that no use of the Internet or functions that are
particular to Internet are identified. Id. The Examiner further explains:
The patent at issue in DDR provided an Internet-based solution
to solve a problem unique to the Internet that ( 1) did not
foreclose other ways of solving the problem, and (2) recited a
specific series of steps that resulted in a departure from the
routine and conventional sequence of events after the click of a
hyperlink advertisement. Id. at 1256-57, 1259. The patent
claims here do not address problems unique to the Internet, so
DDR has no applicability.
Ans. 3--4.
We are not persuaded by Appellant's arguments. Instead, we agree
with the Examiner (see above) that the recited computer components and
functions are recited at a high level of generality such that the claims recite
generic computer components performing generic computer functions (e.g.,
"designate " "define " "receive" and "hide") and the claims amount to no
' ' '
more than implementing the abstract idea with a computerized system.
Contrary to Appellant's argument that the claimed invention addresses
maintaining doctor-patient confidentiality, for example, when sending a
clinical data file including the patient image over an unsecured Internet
8
Appeal2017-008175
Application 14/2 72, 186
connection, we conclude that the claimed functionality of designating
personal files, displaying a patient image, and hiding a defined portion of the
patient image merely improves the efficiency of the privacy measures in the
medical field (i.e., selectively displaying or sending a patient image)
implemented by the computer system. In other words, the argued
improvement is really an improvement of the underlying economic practice
itself, rather than an improvement of the computer system or computer
technology that implements the underlying economic practice.
Appellant's argument that claim 1 is similar to the claims in DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014), is
also not persuasive. App. Br. 8. In DDR, the court determined that the
claims at issue were necessarily rooted in computer technology in order to
address the Internet-centric problem of how to provide user access to
computer-implemented applications over the Internet. DDR, 773 F.3d at
1257. In contrast, sending a clinical data file including the patient image
over an Internet connection such that portions of personal files that are
designated confidential are hidden, as recited in claims 1, 8, and 16, are not
necessarily rooted in computer technology, because the recited features
could also occur outside the context of computer technology (e.g., if the
aforementioned selecting and hiding a portion of the patient image are
implemented using pen and paper).
In light of the above, the Examiner correctly concluded that claims 1-
26 do not amount to significantly more than an abstract idea. We, therefore,
sustain the Examiner's rejection of claims 1-26 under 35 U.S.C. § 101.
9
Appeal2017-008175
Application 14/2 72, 186
REJECTION UNDER 35 USC§ 103
In rejecting claim 1, the Examiner relies on Knaus as disclosing the
recited "designate personal information about a subject of the personal data
file" and on Uemura as disclosing "display a patient image of at least a
portion of a patient's body on a display of a computing device" and "hide a
first portion of the patient image ... and leave a second portion of the
patient image visible." Final Act. 3--4. The Examiner further finds Eida
discloses the claim limitation of "define a first portion of the patient image
as a privacy region" and "hide the first portion of the patient image." Final
Act. 4 (citing Eida ,r,r 186-189). The Examiner finds it would have been
obvious to one of ordinary skill in the art to combine the teachings of Knaus
and Uemura with Eida to improve presentation of information by limiting
the display of information to the viewer based on entry of a pass code and to
provide patients control over their personal medical records that contain
confidential information. Final Act. 4, 5.
Appellant argues the proposed combination does not teach or suggest
the recited elements of claim 1 because the cited passages in paragraphs 45-
49 and 59 of Uemura relate to disclosure of images and not "hiding a first
portion of a patient image using a defined privacy region while leaving a
second portion of the patient image visible." App. Br. 11. Acknowledging
Eida discloses a partial deletion of a portion of a patient's image, Appellant
contends Eida does not teach the recited hiding a first portion of a patient
image because deleting and hiding are not the same. App. Br. 12.
We are not persuaded by Appellant's above-mentioned contentions
because the Examiner's rejection is based on the combination of Eida with
Knaus and Uemura. See also Reply Br. 6-7. That is, the Examiner finds
10
Appeal2017-008175
Application 14/2 72, 186
Uemura teaches hiding a first portion of the patient's image and leaving a
second portion visible to a viewer while the hidden portion may be viewed
upon providing a pass code. See Ans. 4--5. The Examiner further relies on
Eida as teaching the recited steps of "define a first portion of the patient
image as a privacy region" and "hide the first portion of the patient image."
Final Act. 4--5; Ans. 5.
Eida, in paragraph 189 discloses "if the face and the diseased part of
the female patient are entered in the data of a same image, either one is
deleted or obscured in order to alleviate the uneasiness of the patient," which
indicates that a portion of the patient's image in not shown. We also agree
with the Examiner that hiding a portion of an image encompasses obscuring
or deleting that part of the image. That is, consistent with Appellant's
disclosure describing examples of how "hiding a first portion of the patient's
image" is achieved using "blacking out" or blurring" of the area, hiding a
portion of an image by deleting or obscuring in Eida meets the recited step
of "hide a first portion of a patient's image." See Specification 12:27-13:3;
Fig. 6.
As discussed above, we are not persuaded by Appellant's contention
that the combination of the references does not teach or suggest the recited
claim features or the cited passages in Eida do not teach "hiding a first
portion of the patient's image. See App. Br. 9-13. Appellant's contentions
focus on the references separately and ignore the fact that the proposed
rejection is based on the combination of Eida with Knaus and Uemura. See
In re Keller, 642 F.2d 413,425 (CCPA 1981); In re Merck & Co. Inc., 800
F.2d 1091, 1097 (Fed. Cir. 1986).
11
Appeal2017-008175
Application 14/2 72, 186
Therefore, we sustain the 35 U.S.C. § 103(a) rejection of claims 1, 8,
and 16, as well as claims 2-7, 9-15, and 17-26, which are not argued
separately or with sufficient specificity. See App. Br. 13.
DECISION
We affirm the Examiner's rejections of claims 1-26 under
35 U.S.C. § 101.
We affirm the Examiner's rejections of claims 1-26 under
35 U.S.C. § 103.
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
12