Ex Parte Nikolova-Simons et al

Patent Trial and Appeal Board

Jun 25, 2018

13983643 (P.T.A.B. Jun. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/983,643 08/05/2013 Mariana Nikolova-Simons
24737 7590 06/27/2018
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.
2011P00042WOUS 6436
EXAMINER
REYES, REGINALD R
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
06/27/2018 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
Ex parte MARIANA NIKOLOV A-SIMONS, JOHAN MUSKENS,
JOSEPH ERNEST ROCK, and HANS-ALOYS WISCHMANN
Appeal2017-000523
Application 13/983,643 1
Technology Center 3600
Before NINA L. MEDLOCK, BRUCE T. WIEDER, and
KENNETH G. SCHOPPER, Administrative Patent Judges.
WIEDER, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner's rejection of claims 1, 3, 4, 6-8, 11, and 13-21. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
Appellants' claimed invention relates to a system and "method of
patient discharge planning." (Spec. 1.)
1 According to Appellants, the real party in interest is Koninklijke Philips
N.V. (Appeal Br. 2.)
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Application 13/983,643
Claims 1, 11, and 20 are the independent claims on appeal. Claim 1 is
illustrative. It recites:
1. A method of patient discharge planning, comprising:
evaluating, by a processor, a patient record including
patient data parameters of a patient;
determining, by the processor, a set of discharge criteria as
a function of the patient data parameters;
predicting, by the processor, a change in the patient record
for all possible treatment options;
determining, by the processor, a discharge score as a
function of the discharge criteria;
generating, by the processor, a discharge recommendation
based on the discharge score; and
displaying, by a display the discharge recommendation to
a user,
wherein the discharge recommendation includes one of (i)
a first recommendation to discharge the patient if the discharge
score exceeds a predetermined threshold and (ii) a
recommendation not to discharge the patient if the discharge
score is below the predetermined threshold.
REJECTIONS
Claims 1, 3, 4, 6-8, 11, and 13-21 are rejected under 35 U.S.C. § 101
as directed to non-statutory subject matter.
Claims 1, 3, 4, 6-8, 11, and 13-21 are rejected under 35 U.S.C.
§ 103(a) as unpatentable in view of Haines (US 2002/0188182 Al, pub.
Dec. 12, 2002) and Alden (US 2011/0071851 Al, pub. Mar. 24, 2011).
ANALYSIS
The§ 1 OJ rejection
"Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
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thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title." 35 U.S.C. § 101. Section 101, however,
"'contains an important implicit exception: Laws of nature, natural
phenomena, and abstract ideas are not patentable.'" Alice Corp. Pty. Ltd. v.
CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quoting Assoc.for Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
Alice applies a two-step framework, earlier set out 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, 134 S. Ct. at 2355.
Under the two-step framework, it must first be determined if "the
claims at issue are directed to a patent-ineligible concept." Id. If the claims
are determined to be directed to a patent-ineligible concept, then the second
step of the framework is applied to determine if "the elements of the
claim ... contain[] an 'inventive concept' sufficient to 'transform' the
claimed abstract idea into a patent-eligible application." Id. at 2357 (citing
Mayo, 566 U.S. at 72-73, 79).
With regard to step one of the Alice framework, the Examiner
determines that "[ c ]laim 1 is directed to the abstract idea of comparing new
and stored information and using rules to identify options." (Final
Action 6.)
Appellants disagree and argue that "[ c ]laim 1 requires significantly
more." (Appeal Br. 4.) In particular, Appellants argue that "claim 1
requires transforming discharge criteria into a discharge score, constructing
a prediction for all possible treatment options, etc." and that "these acts ...
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are not well-understood, routine, and conventional activities known to the
industry." (Id.)
Under step one of the Alice framework, we "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 Texas, LLC
v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)).
The Specification provides evidence as to what the claimed invention
is directed. In this case, the Specification discloses that the invention relates
to a system and "method of patient discharge planning." (Spec. 1.) Claim 1
recites "[a] method of patient discharge planning, comprising: evaluating
... a patient record," "determining ... a set of discharge criteria,"
"predicting ... a change in the patient record," "determining ... a discharge
score," "generating ... a discharge recommendation," "and displaying ...
the discharge recommendation."
"[W]e have treated collecting information, including when limited to
particular content (which does not change its character as information), as
within the realm of abstract ideas." Elec. Power Grp., 830 F.3d at 1353. "In
a similar vein, we have treated analyzing information by steps people go
through in their minds, or by mathematical algorithms, without more, as
essentially mental processes within the abstract-idea category." Id. at 1354.
"And we have recognized that 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." Id. "Here, the claims are clearly focused
on the combination of those abstract-idea processes." Id.
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Although we and the Examiner describe, at different levels of
abstraction, to what the claims are directed, it is recognized that "[a]n
abstract idea can generally be described at different levels of abstraction."
Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016). That
need not and, in this case does not, "impact the patentability analysis." See
id. at 1241. In short, we agree with the Examiner that claim 1 is "directed to
the abstract idea of comparing new and stored information and using rules to
identify options" and displaying the results. (See Final Action 6.)
We now look to step two of the Alice framework. Step two of the
Alice framework has been described "as a search for an ' "inventive
concept" '-i.e., 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 (citing Mayo,
566 U.S. at 72-73).
The Examiner finds that claim 1
does not include additional elements that are sufficient to amount
to significantly more than the judicial exception because the
computer as recited is a generic computer component that
performs functions (i.e., displaying.). These are generic
computer functions (i.e., rece1vmg data, making data
determinations, populating data, and providing notifications) that
are well-understood, routine, and conventional activities
previously known to the industry.
(Final Action 6.)
We agree. "The claims at issue do not require any nonconventional
computer, network, or display components, or even a 'non-conventional and
non-generic arrangement of known, conventional pieces,' but merely call for
performance of the claimed information collection, analysis, and display
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functions" on a generic processor and display. Elec. Power Grp., 830 F.3d
at 1355; see also Spec. 4 (disclosing use of a generic processor for
performing the claimed method).
Nonetheless, and as noted above, Appellants also argue that the
claimed steps "are not well-understood, routine, and conventional activities
known to the industry." (Appeal Br. 4.) But Appellants do not explain why,
in this instance, the steps of evaluating data, determining results, and
displaying results are not well-understood, routine, and conventional
activities. "[T]hese claims in substance [are] directed to nothing more than
the performance of an abstract business practice ... using a conventional
computer. Such claims are not patent-eligible." DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014).
In view of the above, we are not persuaded that the Examiner erred in
rejecting claim 1 under§ 101. Claims 3, 4, 6-8, 11, and 13-21 are not
separately argued. Therefore, they fall with claim 1. See 3 7 C.F .R.
§ 41.37(c)(l)(iv).
The§ 103(a) rejection
In rejecting claim 1, the Examiner finds that paragraph 41 of Haines
discloses the step of "predicting, by a processor, a change in the patient
record for all possible treatment options." (Final Action 7.) With regard to
the term "for all possible treatment options," the Examiner
remind[s Appellants] that that functional recitation(s) using the
word "for" or other functional language (e.g. "capable of') have
been considered but given less patentable weight because they
fail to add any steps and are thereby regarded as intended use
language. A recitation of the intended use of the claimed
invention must result in additional steps. See Bristol-Myers
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Squibb Co. v. Ben Venue Laboratories, Inc., 246 F.3d 1368,
1375-76, 58 USPQ2d 1508, 1513 (Fed. Cir. 2001).
(Answer 6.)
Appellants disagree and argue that, unlike Bristol-Myers,
the "for" language in claim 1 is part of an active step of claim l;
it is a prepositional phrase that further limits the "predicting"
step. It results in a manipulative difference in the steps of the
claim at least because it defines the scope of the prediction,
which must be for all possible treatment options. This claim
limitation is not a purpose or an intended result of the active steps
of the claim.
(Reply Br. 2.)
In Bristol-Myers, the question was whether the language in a claim
preamble, i.e., "[a] method for reducing hematologic toxicity in a cancer
patient undergoing [t]axol treatment comprising ... ,"limited the scope of
the claim. Bristol-Myers, 246 F.3d at 1375. The court agreed with the
district court that the preamble term "for reducing hematologic toxicity" was
"non-limiting, and merely express[ed] a purpose." Id. The court also agreed
with the district court that the preamble term in another claim, "[a] method
for treating a cancer patient to effect regression of a taxol-sensitive tumor,
said method being associated with reduced hematologic toxicity," was "only
a statement of purpose and intended result. The expression does not result in
a manipulative difference in the steps of the claim." Id. at 1375-76.
Unlike the claims in Bristol-Myers, here, the step of "predicting, by
the processor, a change in the patient record for all possible treatment
options," results in a difference in the step. That is, the predicting step could
produce different results if predicting a change in the patient record for only
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a first treatment option versus predicting a change in the patient record for,
e.g., first, second, and third treatment options.
Paragraph 41 of Haines, relied on by the Examiner as disclosing this
step, recites in relevant part:
The disease management protocol module provides a
course of treatment and care that suggests specific medical
management devices to be used, and the frequency of such use.
. . . The course of treatment and care also suggests a nominal
schedule enumerating a specific number of visits necessary to
complete the prescribed treatment for the patient within the
specified care plan.
(Haines i-f 41.) Haines also discloses that "[t]he effectiveness of the care
plan can then be assessed in order to improve the applied modules
accordingly and the care plan adjusted to maximize medical recovery." (Id.
,-r 49.)
However, the Examiner does not sufficiently explain how the relied
on portions of Haines disclose predicting "for all possible treatment
options," or why, in view of the disclosure, it would have been obvious to
predict "for all possible treatment options." Therefore, we are persuaded
that the Examiner erred in rejecting claim 1 under§ 103(a).
Independent claims 11 and 20 contain similar language, and for
similar reasons we are persuaded that the Examiner erred in rejecting
claims 11 and 2 0, and dependent claims 3, 4, 6-8, 13-19, and 21.
DECISION
The Examiner's rejection of claims 1, 3, 4, 6-8, 11, and 13-21 under
35 U.S.C. § 101 is affirmed.
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The Examiner's rejection of claims 1, 3, 4, 6-8, 11, and 13-21 under
35 U.S.C. § 103(a) is reversed.
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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