Ex Parte Metzger

Patent Trial and Appeal Board

Jun 29, 2018

13174856 (P.T.A.B. Jun. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/174,856 07 /01/2011
104326 7590 07/03/2018
Schwegman Lundberg & Woessner I Zimmer
P.O. Box 2938
Minneapolis, MN 55402
FIRST NAMED INVENTOR
Robert Metzger
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.
5394.962US 1 1543
EXAMINER
TOMASZEWSKI, MICHAEL
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
07 /03/2018 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):
SLW@blackhillsip.com
USPTO@slwip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT METZGER
Appeal2017-003967
Application 13/174,856 1
Technology Center 3600
Before ST. JOHN COURTENAY III, JENNIFERL. McKEOWN, and
JAMES W. DEJMEK, Administrative Patent Judges.
DEJMEK, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-14 and 25-34. Appellant has canceled claims 15-24. See Final
Act. 2. We have jurisdiction over the remaining pending claims under
35 U.S.C. § 6(b ).
We affirm.
1 Appellant identifies Biomet Manufacturing, LLC as the real party in
interest. Br. 2.
Appeal2017-003967
Application 13/174,856
STATEMENT OF THE CASE
Introduction
Appellant's disclosed and claimed invention generally relates to
"preparing a backup kit for a shipment of patient-specific arthroplasty kits
for corresponding arthroplasty procedures scheduled at the same medical
facility." Spec. i-f 2. According to the Specification, patient-specific devices
(e.g., implants, alignment guides, and other instruments) may be designed
prior to the implant procedure (i.e., preoperatively) based on, for example,
three-dimensional images of the patient's joint anatomy. Spec. i-fi-1 14--17.
However, during the implant surgery (i.e., intraoperatively), the size of the
implant, as preoperatively determined, may not be ideal and a different size
may be required. Spec. i-f 24. In such situations a backup kit may have
differently sized implants that are a better match. Spec. i-f 24. "Providing
backup sizes (one size larger or one size smaller than a planned size) for
each and every implant in the shipment to the same facility can be costly,
wasteful and inefficient both in bulk and weight." Spec. i-f 26. Accordingly,
Appellant's claimed invention is intended "to reduce the number of backup
implants for the shipment, while still providing a high probability that the
intraoperatively determined implant size is the planned size or is included in
the backup kit." Spec. i-f 26.
Claim 1 is representative of the subject matter on appeal and is
reproduced below:
1. A method for preparing a backup kit for a plurality of
patient-specific arthroplasty procedures scheduled at the same
medical facility for a plurality of different patients, the method
compnsmg:
generating a database of data from completed arthroplasty
procedures using patient-specific arthroplasty kits, information
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Application 13/174,856
collected and provided by the database including comparisons
between preoperatively planned implant sizes and
intraoperatively implanted implant sizes, the database being
updated after the patient-specific arthroplasty procedures are
performed and depending upon the characteristics of implants
and instruments used in the plurality of patient-specific
arthroplasty procedures;
determining a statistically expected implant size deviation
from a planned implant size for each implant included in a
plurality of patient-specific arthroplasty kits for a plurality of
different patients during a planned time period prepared for a
shipment to the medical facility using the database, the
determining of the statistically expected implant size deviation
being performed utilizing algorithms for statistical analysis; and
assembling an omnibus backup kit of backup implants for
the shipment, the assembling including accessing and
referencing the database, wherein the number and size of the
backup implants are determined from the statistically expected
implant size deviations and a number of implants corresponding
to the planned implant size based on the totality of procedures
for the plurality of different patients during the planned time
period, and wherein construction of the backup implants is
determined from the statistically expected implant size
deviations and the number of implants corresponding to the
planned implant size based on the totality of procedures for the
plurality of different patients during the planned time period.
The Examiner's Rejection
Claims 1-14 and 25-34 stand rejected under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter. Final Act. 2-3.
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Application 13/174,856
ANALYSIS 2
Appellant disputes the Examiner's conclusion that the pending claims
are directed to patent-ineligible subject matter. Br. 12-23. In particular,
Appellant asserts the Examiner failed to make an evidentiary showing to
establish a prima facie case of ineligibility. Br. 12-13. Further, Appellant
argues the claims are not directed to patent-ineligible subject matter, but
rather "to a specific set of steps for preparing a backup kit for a plurality of
patient-specific arthroplasty procedures scheduled at the same medical
facility for a plurality of different patients." Br. 16. Appellant asserts this is
neither a method of organizing human activity nor a fundamental economic
practice. Br. 16.
Contrary to Appellant's assertions, there is no requirement that
Examiners must provide evidentiary support in every case before a
conclusion can be made that a claim is directed to an abstract idea. See, e.g.,
para. IV "July 2015 Update: Subject Matter Eligibility" to 2014 Interim
Guidance on Subject Matter Eligibility (2014 IEG), 79 Fed. Reg. 74618
(Dec. 16, 2014) ("The courts consider the determination of whether a claim
is eligible (which involves identifying whether an exception such as an
abstract idea is being claimed) to be a question of law. Accordingly, courts
do not rely on evidence that a claimed concept is a judicial exception, and in
most cases resolve the ultimate legal conclusion on eligibility without
making any factual findings.") (Emphasis added). Further, the Office did
not change the standard in the May 4, 2016 Memorandum, Formulating a
2 Throughout this Decision, we have considered the Appeal Brief, filed
June 9, 2016 ("Br."); the Examiner's Answer, mailed September 13, 2016
("Ans."); and the Final Office Action, mailed February 9, 2016 ("Final
Act."), from which this Appeal is taken.
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Application 13/174,856
Subject Matter Eligibility Rejection and Evaluating the Applicant's
Response to a Subject Matter Eligibility Rejection. Evidence may be helpful
in certain situations where, for instance, facts are in dispute. However, it is
not always necessary. It is not necessary in this case.
Additionally, the Federal Circuit has repeatedly noted that "the prima
facie case is merely a procedural device that enables an appropriate shift of
the burden of production." Hyatt v. Dudas, 492 F.3d. 1365, 1369 (Fed. Cir.
2007) (citing Jn re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). The
court has, thus, held that the USPTO carries its procedural burden when its
rejection satisfies the requirements of 3 5 U.S. C. § 13 2 by notifying the
applicant of the reasons for rejection, "together with such information and
references as may be useful in judging of the propriety of continuing the
prosecution of [the] application." In re Jung, 637 F.3d 1356, 1362 (Fed. Cir.
2011 ). Thus, all that is required of the Office is that it set forth the statutory
basis of the rejection in a sufficiently articulate and informative manner as to
meet the notice requirement of 35 U.S.C. § 132. Jung, 637 F.3d at 1362; see
also Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990) (Section 132
"is violated when a rejection is so uninformative that it prevents the
applicant from recognizing and seeking to counter the grounds for
rejection."). As set forth in the Final Office Action, we find the Examiner
has met the notice requirements of Section 132(a) in rejecting claims 1-14
and 25-34 under 35 U.S.C. § 101. See Final Act. 2-3.
The Supreme Court's two-step framework guides our analysis of
patent eligibility under 35 U.S.C. § 101. Alice Corp. Pty. 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
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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. 2-3. In
particular, the Examiner concludes the claims are directed to the abstract
idea of managing medical supplies and processing medical information.
Final Act. 2. The Examiner explains that managing medical supplies is a
method of organizing human activities and processing medical information
collects, organizes, compares, stores, transmits, and applies mathematical
formulas/relationships to data. Final Act. 2.
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.,
841F.3d1288, 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 (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
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Application 13/174,856
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
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, "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., 881F.3d1360, 1366 (Fed. Cir.
2018).
Further, merely combining several abstract ideas does not render the
combination any less abstract. RecogniCorp, LLC v. Nintendo Co. Ltd., 855
F.3d 1322, 1327 (Fed. Cir. 2017) ("Adding one abstract idea (math) to
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Application 13/174,856
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 generally directed to identifying likely
components (i.e., implants) for a backup arthroplasty kit based on a
statistical analysis of gathered and collected data. The data includes
information from previous procedures (including comparisons between
preoperatively determined implant sizes and intraoperatively implanted
sizes). The data is maintained in a database. Statistical analysis algorithms
are used to determine a statistically expected implant size deviation. Based
on the expected deviations for a plurality of arthroplasty procedures, the
appropriate set of backup implants may be identified and assembled into an
omnibus backup kit of backup implants.
The claimed "generating a database of data" using collected
information and comparisons of collected and stored information is similar
to the collection, manipulation, recognition, and storing of data, which our
reviewing court has 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, utilizing algorithms for statistical analysis to determine an
expected implant size deviation does not make the analysis of data any less
abstract. See RecogniCorp, 855 F.3d at 1327; see also Digitech Image
Techs., LLC v. Elec.for Imaging, Inc., 758 F.3d 1344, 1350 (Fed. Cir. 2014)
(concluding "a process of organizing information through mathematical
correlations and is not tied to a specific structure or machine" to be abstract);
Parker v. Flook, 437 U.S. 584, 595 (1978) ("If a claim is directed essentially
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to a method of calculating, using a mathematical formula, even if the
solution is for a specific purpose, the claimed method is nonstatutory.").
Additionally, the identification of backup implants for assembly in backup
kits is similar to recognizing data and organizing human activities. See
BASCOM Global Internet Servs. V. AT&T Mobility LLC, 827 F.3d 1341,
1348 (Fed. Cir. 2016); Content Extraction, 776 F.3d at 1347; see also
Digitech Image Techs., LLC v. Elec.for Imaging, Inc., 758 F.3d 1344, 1350
(Fed. Cir. 2014) (concluding "a process of organizing information through
mathematical correlations and is not tied to a specific structure or machine"
is an abstract idea). Accordingly, we conclude the character as a whole of
the claims is directed to an abstract idea.
To the extent Appellant contends the Examiner's conclusion that the
claims are directed to an abstract idea is inconsistent with other patent
claims (see Br. 17-19), we are unpersuaded of Examiner error. Rather than
a review of other patents related to similar subject matter that may have
issued, the correct inquiry and analysis must be directed to the pending
claims. See Accenture Glob. Servs., GmbH v. Guidewire Software, Inc., 728
F.3d 1336, 1345 (Fed. Cir. 2013) (admonishing that "the important inquiry
for a § 101 analysis is to look to the claim"). "Each case is determined on its
own merits," and "[i]n reviewing specific rejections of specific claims, [the
Board] does not consider allowed claims in other applications or patents."
In re Gyurik, 596 F.2d 1012, 1018 n.15 (CCPA 1979) (citations omitted).
Because we determine the claims are directed to an abstract idea or
combination of abstract ideas, we analyze 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
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the abstract idea. Alice, 134 S. Ct. at 2355 (citing Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1294, 1297-98 (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, 776 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 finding that the functions
of "providing a database having data, determining implant sizes, determining
a statistical expected implant size deviation, assembling backup kits, etc."
are well-understood, routine, and conventional activities previously known
to the pertinent industry. Final Act. 3; see Br. passim; see also Intellectual
Ventures I LLC v. Capital One Bank, 792 F.3d 1363, 1371 (Fed. Cir. 2015);
Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315, 1327-31
(Fed. Cir. 2017). Rather, Appellant asserts the claimed solution addresses a
technological problem in conventional industry practice. Br. 20-22. We
disagree. As the Examiner explains, "the claims do not solve a
technological problem but a business method problem of choosing the
correct implant sizes for implantation by linking the abstract ideas to a
technological environment using well-known computer technology." Ans.
7; see also Intellectual Ventures, 850 F.3d at 1340 (limiting an invention to a
technological environment for which to apply the underlying abstract
concept does not make an abstract concept any less abstract).
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Appellant also contends the pending claims would not preempt the
abstract idea of "providing healthcare by assembling backup kits for patient-
specific arthroplasty procedures. Br. 17-18, 22-23. As such, Appellant
asserts the instant claims are eligible for a streamlined analysis. Br. 18.
As an initial matter, "[f]or purposes of efficiency in examination, a
streamlined analysis can be used for a claim that may or may not recite a
judicial exception but, when viewed as a whole, clearly does not seek to tie
up any judicial exception such that others cannot practice it." 2014 Interim
Guidance on Patent Subject Matter Eligibility, 79 Fed. Reg. 74618, 74625
(December 16, 2014) (emphases added). Additionally, the Interim Guidance
indicates a "full analysis should be conducted" if there is doubt that the
applicant is effectively seeking coverage for a judicial exception. Interim
Guidance, 79 Fed. Reg. at 74625. Thus, a streamlined eligibility analysis is
available to Examiners who are of the view that a claim clearly does not
have a subject matter eligibility problem. In this Appeal, the controlling law
on patent eligibility is the two-step test under Alice/Mayo as described
herein.
Further, "'while 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."). Moreover, "[w]here a patent's claims are deemed
only to disclose patent ineligible subject matter under the Mayo framework,
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as they are in this case, preemption concerns are fully addressed and made
moot." Ariosa, 788 F.3d at 1379; see also Ans. 19-20.
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the Examiner's rejection of independent
claim 1 under 35 U.S.C. § 101. For similar reasons, we also sustain the
Examiner's rejection of independent claims 10 and 31under35 U.S.C.
§ 101. Additionally, we sustain the Examiner's rejection of claims 2-9, 11-
14, 25-30, and 32-34, which depend directly or indirectly therefrom and
were not argued separately. See Br. 23; see also 37 C.F.R. § 41.37(c)(l)(iv)
(2015).
DECISION
We affirm the Examiner's decision rejecting claims 1-14 and 25-34
under 35 U.S.C. §101.
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). See
37 C.F.R. § 41.50(f).
AFFIRMED
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