Ex Parte Leichner

Patent Trial and Appeal Board

Mar 23, 2018

12091100 (P.T.A.B. Mar. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/091, 100 04/22/2008 Robert C. Leichner
38107 7590 03/27/2018
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.
2005P02030WOUS 9398
EXAMINER
PAULS, JOHN A
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
03/27/2018 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):
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
Exparte ROBERT C. LEICHNER1
Appeal 2016-008743
Application 12/091, 100
Technology Center 3600
Before MURRIEL E. CRAWFORD, MICHAEL C. ASTORINO, and
PHILIP J. HOFFMANN, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellant identifies KONINKLIJKE PHILIPS, N.V. as the real party in
interest. App. Br. 1
Appeal2016-008743
Application 12/091, 100
STATEMENT OF THE CASE
Appellant seek our review under 35 U.S.C. § 134 of the Examiner's
final decision rejecting claims 2-11, 14, 15, 18, 20, and 22-25. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b ).
BACKGROUND
Appellant' invention is directed to a health management system for
remote interactive outpatient health monitoring and training at the patient's
home. Spec. 1-2.
Claim 9 is illustrative:
9. A health management system comprising:
one or more memories at a central location which store a
patient profile corresponding to each of a plurality of patients
and a plurality of educational content sessions, the educational
content sessions being directed toward helping patients achieve
a health management goal;
at least one feedback path from each of the
patients which provides at least one input;
one or more processors at a patient site for each
patient programmed to:
monitor for critical events based on user
input and/or biometric data received from the
patients;
automatically select a plurality of the
content sessions and a flow of the selected
educational content sessions for each patient based on
the patient profile, the input from the corresponding
patient, and on content flow rules, the selected
educational content sessions for at least one of the
patients including critical event content selected in
response to detecting a critical event, and the selected
for at least one of the patients including a previously
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Application 12/091, 100
selected educational content session in response to the
input from the corresponding patient; and,
communicate the selected educational content
sessions into a user interface associated with the
corresponding patient;
a display device at each user interface on which
the selected educational content sessions are presented to
the correspondent patient.
Appellant appeals the following rejection:
Claims 2-11, 14, 15, 18, 20, and 22-25 under 35 U.S.C. § 101.
PRINCIPLES OF LAW
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101. The
Supreme Court, however, has long interpreted § 101 to include implicit
exceptions: "[l]aws of nature, natural phenomena, and abstract ideas" are
not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 134 S. Ct.
2347, 2354 (2014).
In determining whether a claim falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court's two-
step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296-97
(2012)). In accordance with that framework, we first determine whether the
claim is "directed to" a patent-ineligible abstract idea. See Alice, 134 S. Ct.
at 2356 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4 in
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Appeal 2016-008743
Application 12/091, 100
petitioners' application explain the basic concept of hedging, or protecting
against risk."); Diamond v. Diehr, 450 U.S. 175, 184 (1981) ("Analyzing
respondents' claims according to the above statements from our cases, we
think that a physical and chemical process for molding precision synthetic
rubber products falls within the § 101 categories of possibly patentable
subject matter."); Parker v. Flook, 437 U.S. 584, 594--595 (1978)
("Respondent's application simply provides a new and presumably better
method for calculating alarm limit values."); Gottschalk v. Benson, 409 U.S.
63, 64 (1972) ("They claimed a method for converting binary-coded decimal
(BCD) numerals into pure binary numerals.").
The patent-ineligible end of the spectrum includes fundamental
economic practices, Alice, 134 S. Ct. at 2357; Bilski, 561 U.S. at 611;
mathematical formulas, Parker, 437 U.S. at 594--95; and basic tools of
scientific and technological work, Gottschalk, 409 U.S. at 69. On the patent-
eligible side of the spectrum are physical and chemical processes, such as
curing rubber, Diamond, 450 U.S. at 184 n.7, "tanning, dyeing, making
waterproof cloth, vulcanizing India rubber, smelting ores," and a process for
manufacturing flour, Gottschalk, 409 U.S. at 69.
If the claim is "directed to" a patent-ineligible abstract idea, we then
consider the elements of the claim-both individually and as an ordered
combination-to assess whether the additional elements transform the nature
of the claim into a patent-eligible application of the abstract idea. Alice, 134
S. Ct. at 2355. This is a search for an "inventive concept"-an element or
combination of elements sufficient to ensure that the claim amounts to
"significantly more" than the abstract idea itself. Id.
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Appeal 2016-008743
Application 12/091, 100
Claims involving data collection, analysis, and display are directed to
an abstract idea. Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350, 1353
(Fed. Cir. 2016) (holding that "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"); see also In re TL!
Commc 'ns. LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir.
2016).
ANALYSIS
Rejection under 35 USC §101
The Examiner held that claim 9 is directed to the abstract idea of
selecting content and a flow of the content based on patient profile, patient
input and rules. The Examiner further held that claim 9 recites using
categories to organize store and transmit information and/or using rules to
identify options and that the claim includes communicating, receiving data
and displaying content. Final Act. 4.
Appellant's argument that the claims are not directed to a fundamental
economic practice, method of organizing human activity, an idea "of itself'
or a mathematical formula is not persuasive of error by the Examiner,
because the Examiner did not hold that the claims were so directed. Rather,
the Examiner held that the claims relate to communicating, receiving and
displaying content. Final Act. 4. As such, the Examiner holds that the
claims are directed to collection, analysis and transmission of data, which
has been held by the courts to be an abstract idea.
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Application 12/091, 100
In regard to the second part of the Alice test, the Examiner held that
the claims include generic computer structure that serves to perform generic
computer functions that merely link the abstract idea to a particular
technological environment. Final Act. 5.
We are not persuaded of error on the part of the Examiner in holding
that claim 9 is directed to an abstract idea by Appellant's argument that
claim 9 distinguishes over references and is novel. To the extent Appellant
maintains that the limitations of claim 9 necessarily amount to "significantly
more" than an abstract idea because the claimed apparatus is allegedly
patentable over the prior art, Appellant misapprehends the controlling
precedent. Although the second step in the Alice/Mayo framework is
described as a search for an "inventive concept," the analysis is not an
evaluation of novelty but rather, a search for "'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."' Alice,
134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct. at 1294). A novel and
nonobvious claim directed to a purely abstract idea is, nonetheless, patent-
ineligible. See Mayo, 132 S. Ct. at 1304.
We are not persuaded of error on the part of the Examiner by
Appellant's argument that the claim sets forth a detailed and intricate series
of hardware and computer operations that store and present a plurality of
content sessions and a flow of selected educational sessions for each patient.
Claim 9 recites a system that includes a memory at a central location and a
processor with a user interface at the patient site, which is not an intricate
series of hardware. In addition, claim 9 recites selecting content sessions,
sending data between the memory at the central location and the user
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Appeal 2016-008743
Application 12/091, 100
interface and sending content session, which is not an intricate series of
computer operations but rather merely sending data, processing data, and
storing data. The Appellant has not established that the Examiner erred in
finding that claim 9 does not disclose significantly more than the abstract
idea.
We do not agree with the Appellant that the Examiner has failed to
identify the abstract idea much less identify and analyze the additional
limitations and provide a reasoned analysis why the additional limitations do
not amount to significantly more. As we have stated above, the Examiner
clearly identified the abstract idea on page 4 of the Final Action, and found
that the additional elements did not amount to significantly more on page 5
of the Final Action.
In view of the foregoing, we will sustain the rejection as it is directed
to claim 9.
Claim 11 further defines the content rules recited in claim 9, and, as
such, further defines the abstract idea of claim 9. Therefore, we will sustain
the rejection of this claim as well.
Claim 2 recites that the feedback path includes a biometric device,
that the input includes biometric data acquired by the biometric device, and
that the biometric data is wirelessly communicated to provide an input.
The Examiner found that the recitation of a biometric device did not
amount to significantly more because the biometric device is well
understood, routine, and conventional. Final Act. 5.
We will not sustain the rejection of claim 2 because the Examiner has
not established or explained why a feedback path that includes a biometric
device is not significantly more than the abstract idea articulated by the
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Application 12/091, 100
Examiner. While a biometric device itself may be conventional and well
known, the Examiner has not shown, nor even discussed, that the use of a
biometric device to provide an input to a health management system is
conventional and well known. Absent such a showing, the Examiner has
failed to establish that claim 2 does not recite significantly more than the
abstract idea.
In view of the foregoing, we will not sustain the rejection as it is
directed to claim 2. We will also not sustain this rejection as it is directed to
claims 3-8, 10, 14, 15, 18, 20, and 22-25 for the same reason.
DECISION
We affirm the Examiner's§ 101 rejection of claims 9 and 11.
We do not affirm the Examiner's§ 101 rejection of claims 2-8, 10,
14, 15, 18, 20, and 22-25.
TIME PERIOD
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)(1)(2009).
AFFIRMED-IN-PART
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