Ex Parte Pan

Patent Trial and Appeal Board

Jun 25, 2018

12285839 (P.T.A.B. Jun. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/285,839 10/15/2008
4586 7590 06/27/2018
ROSENBERG, KLEIN & LEE
3458 ELLICOTT CENTER DRIVE-SUITE 101
ELLICOTT CITY, MD 21043
FIRST NAMED INVENTOR
William Pan
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.
MR1957-1082/CIP 1469
EXAMINER
NG, JONATHAN K
ART UNIT PAPER NUMBER
3686
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):
ptoactions@rklpatlaw.com
ptoactions@yahoo.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM PAN
Appeal2017-000500
Application 12/285,839 1
Technology Center 3600
Before BRUCE T. WIEDER, AMEE A. SHAH, and
ROBERT J. SILVERMAN, 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, 4, 7, 10, and 15. We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM.
CLAIMED SUBJECT MATTER
Appellant's claimed "invention relates to a method and a system for
configuring a variety of medical information, and in particular to a method
and a system for converting a variety of medical information into a
1 According to Appellant, the real party in interest is EBM Technologies,
Incorporated. (Appeal Br. 1.)
Appeal2017-000500
Application 12/285,839
searchable format document by a configuration profile." (Spec. 1, 11. 11-
14.)
Claims 1 and 10 are the independent claims on appeal. Claim 1 is
illustrative. It recites:
1. A method for configuring a variety of medical
information, comprising:
identifying a plurality of file formats in each of a plurality
of medical information documents, which is selected from a rich-
text file, a spreadsheet/ chart file, and a graphics file, or in
combination in a document input unit, wherein the medical
information documents are retrieved from a database;
retrieving data from the medical information documents
having a correspondence with a predetermined configuration rule
via a data retrieving unit, each of which corresponds to at least
one of the file formats specified in the medical information
documents;
extracting the medical information associated with the
retrieved data having an identification of a patient, a textual
diagnosis of the patient, and graphical information of the patient
from the medical information documents based on the
configuration rule applied to the data in a context extracting unit;
and obtaining at least an index file, a text file and an image file
for the extracted medical information, wherein the at least three
files are separately stored in at least three different spaces;
assembling via a processor the index file, the text file and
the image file, and the at least three separate files are each
associated with the data extracted from medical information by
the index file which points to the each space for the
corresponding file; the index file including extracted text based
patient identification data, the text file including text based
medical data and text extracted from non-text based medical
data, and the image file including images of the text based patient
identification data, text based medical data and both the text and
images from the non-text based medical data; and
separately storing the at least three files in the at least three
different spaces; wherein the assembly of the at least three files
are provided for a physician to review a single merged document
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Application 12/285,839
of the extracted medical data corresponding to the configuration
rule using single software application, in order to obtain common
textual medical data irrespective of the file format of the
documents from which the data was retrieved.
REJECTIONS 2
Claims 1, 4, 7, 10, and 15 are rejected under 35 U.S.C. § 101 as
directed to non-statutory subject matter.
Claims 1, 4, and 10 are rejected under 35 U.S.C. § 103(a) as
unpatentable in view of Cullen (US 6,397,213 Bl, iss. May 28, 2002),
Johnson (US 5,664,109, iss. Sept. 2, 1997), and Ingle (US 6,938,206 B2, iss.
Aug. 30, 2005).
Claims 7 and 15 are rejected under 35 U.S.C. § 103(a) as unpatentable
in view of Cullen, Johnson, Ingle, and Davis (US 2008/0228522 Al, pub.
Sept. 18, 2008).
ANALYSIS
The § 101 rejection
"Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
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.
2 The rejection of claims 1, 4, 7, 10, and 15 under 35 U.S.C. § 112, first
paragraph, for failing to comply with the written description requirement,
was withdrawn. (Answer 2-3.)
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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).
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 'directed to' inquiry ... cannot simply ask whether the
claims involve a patent-ineligible concept, because essentially
every routinely patent-eligible claim involving physical products
and actions involves a law of nature and/or natural phenomenon
.... Rather, the 'directed to' inquiry applies a stage-one filter to
claims, considered in light of the specification, based on whether
'their character as a whole is directed to excluded subject
matter.' Internet Patents Corp. v. Active Network, Inc., 790 F .3d
1343, 1346 (Fed. Cir. 2015).
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Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016).
Although usually done in a single step, one first determines to what the
claims are directed, and then whether to what they are directed is an abstract
idea.
Here, the Examiner determines that the claims are directed to
"combining common format data into a single data file." (Non-Final
Action 2.)
Appellant disagrees and argues that "[t]he medical information which
is input into the system in different formats is transformed into separate files
each file containing respectively formatted data, which are further accessed
to form an output aggregated document which may be formed irrespective of
the formats of the inputted medical information documents." (Appeal
Br. 16.)
Claim 1 recites "[a] method for configuring a variety of ...
information, comprising: identifying a plurality of files formats in each of a
plurality of ... documents," "retrieving data from the ... documents,"
"extracting the ... information associated with the retrieved data," "and
obtaining at least an index file, a text file and an image file for the extracted
... information," "assembling ... the index file, the text file and the image
file," "and separately storing the at least three files." Although claim 1 also
recites "wherein the assembly of the at least three files are [sic] provided for
a physician to review a single merged document," this is merely an intended
use for the three files. In short, claim 1 does not combine common format
data into a single file.
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The Examiner's subsequent analyses of whether the claims are
directed to an abstract idea, and the patent-eligibility question itself, proceed
from this flawed determination of to what the claims are directed.
In view of the above, we find that the Examiner does not sufficiently
establish that the claims are directed to an abstract idea as required under
step one of the Alice framework. See Alice, 134 S. Ct. at 2355. Therefore,
we will reverse the rejection of claim 1 under § 101. Independent claim 10
contains similar language, and for similar reasons we will reverse the
rejection of claim 10 and dependent claims 4, 7, and 15 under § 101.
The§ 103(a) rejection of claims 1. 4. and 10
Appellant argues that
the summary document produced in the cited art is not identical
to the initial (original) content, i.e., the initial content of the
original documents in the prior art is changed during the process.
In contrast to the cited prior references, in the present invention
the original (source) files are not modified ....
(Appeal Br. 42.)
We agree with the Examiner that "[ t ]here is no language in the claims
that restricts the modification of the original files during the medical
information processing [or] that the summary document must be identical to
the original content." (Answer 6.) Nor does Appellant point to such claim
language. (See Appeal Br. 42.) Therefore, we do not find this argument
persuasive of error.
Appellant also argues that "the claimed concept including the
formation of the separate files (each in a respective format) stored at
different memory spaces for being subsequently aggregated, using a single
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software, into a document displayed for the physician's review - is not
provided in the cited Prior Art references, solely or in combination." (Id.,
emphasis omitted.)
The Examiner finds that Cullen teaches creating the image of a
document where the "image contains data contained within the document
and is saved into [a] database (Fig. 3, col. 6, lines 56-61)." (Answer 7.) The
Examiner also finds that Johnson teaches
extracting textual data items from medical records where a
document's type and source are identified ... (col. 9, lines 16-
35). Johnson also teaches ... receiving text data files and
extracting information from each file type (col. 6, lines 44-62).
Information from the text data files are [sic] extracted and saved
in a database. . . . Johnson further teaches ... assembling the
extracted textual medical information and patient identification
information into separate documents (col. 10, lines 21-29) ....
(Id. at 7-8.) The Examiner also finds Ingle discloses "generating a merged
report containing the extracted medical data using a text based software
application (abstract, col. 4, lines 34-42.)" (Answer 8.) Further, the
Examiner determines that "[i]t would have been obvious to one of ordinary
skill in the art at the time of the invention to combine the aforementioned
features in Ingle with Cullen and Johnson based on the motivation of
generating a medical summary document from source files that have been
reviewed, edited, and attested to minimize to [sic] amount of human
intervention required (Ingle - col. 4, lines 12-15.)" (Id. at 8-9.) Appellant
does not persuasively argue why the Examiner's findings and determination
are in error. Therefore, we do not find this argument persuasive of error.
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Appellant also argues that, unlike the prior art, "[t]he medical-related
three separate files in [the claimed] arrangement are not allowed to be
accessed separately prior to their assembly." (Appeal Br. 42.)
We agree with the Examiner that "[ t ]here is no language in the claims
that restricts access to the individual data files prior to aggregation."
(Answer 9.) Nor does Appellant point to such claim language. (See Appeal
Br. 42--43.) Therefore, we do not find this argument persuasive of error.
Appellant also argues "that the cited prior art systems produce the
final reports in a format of a number of individual documents such as
separate Word, Excel, PDF, and/or Image file in different formats." (Appeal
Br. 44.) The invention, Appellant argues, "in contrast to a number of
individual files, combines the index, text and image files into a single
aggregated (or merged) document which is reviewed by a 'single software'."
(Id.)
The Examiner answers that
Ingle teaches . . . generating a merged report containing the
extracted medical data using a text based software application
(abstract, col. 4, lines 34-42) .... Therefore, the combination of
Cullen, Johnson, and Ingle teach ... "a physician to review a
single merged document of the extracted medical data using only
one of a single [software] application ....
(Answer 10.) Appellant does not persuasively argue why the Examiner's
findings and determination are in error. Therefore, we do not find this
argument persuasive of error.
Appellant also argues that "Ingle requires the physician to make
signature that appears to change the [original] content, which is different
from the claimed invention which does not modify the original content."
(Appeal Br. 45.)
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As discussed above, we see no language in the claims that restricts the
modification of the original files. Nor does Appellant point to such claim
language. (See Appeal Br. 44--45.) Therefore, we do not find this argument
persuasive of error.
In view of the above, we are not persuaded that the Examiner erred in
rejecting claim 1 under§ 103(a). Claim 4 depends from claim 1 and
Appellant relies on the arguments presented with regard to claim 1. (See id.
at 45.) Independent claim 10 contain language similar to that of claim 1 and
Appellant relies on the arguments presented with regard to claim 1. (See id.
at 46.) For the reasons discussed above, we are not persuaded that the
Examiner erred in rejecting claims 4 and 10 under§ 103(a).
The § 103 (a) rejection of claims 7 and 15
Claim 7 recites: "The method of claim 1, wherein the extracted
medical information includes an Id [sic], and a patient's first name, last
name and Gender."
Appellant argues that Davis was cited "for teaching providing data
mining results to a user via a user interface, and classifying the data mining
results to a specific patient including the patient's first and last name, ID
number, and gender-these features missing from Cullen in view of Johnson
and in view of Ingle." (Appeal Br. 47.) Appellant further argues that Davis
does not cure the asserted deficiencies in Cullen, Johnson, and Ingle. (Id.)
Rather, Appellant argues, "Davis merely teaches data mining by accessing a
plurality of data sources to retrieve data related to the patient ... [and] Davis
does not address the assemblage of at least three separate files." (Id.)
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The Examiner finds, and we agree, that Davis discloses "providing
data mining results to a user via a user interface (para. 49). Davis further
teaches ... classifying the data mining results to a specific patient including
the patient's first and last name, ID number, and gender (Fig. 3, 305)(para.
49)." (Non-Final Action 9.) Additionally, we note that the Examiner does
not rely on Davis for teaching assembling the index, text, and image files.
Rather, the Examiner relies on Cullen and Johnson for this teaching. (See id.
at 6.)
In view of the above, we are not persuaded that the Examiner erred in
rejecting claim 7 under§ 103(a). Claim 15, which depends from claim 10,
contains language similar to that of claim 7, and Appellant does not present
additional arguments. (See id. at 48.) Therefore, for the reasons discussed
above, we are not persuaded that the Examiner erred in rejecting claim 15
under§ 103(a).
DECISION
The Examiner's rejection of claims 1, 4, 7, 10, and 15 under 35 U.S.C.
§ 101 is reversed.
The Examiner's rejections of claims 1, 4, 7, 10, and 15 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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