Ex Parte Pizzorno et al

Patent Trial and Appeal Board

Sep 19, 2018

10322282 (P.T.A.B. Sep. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
10/322,282 12/17/2002 Joseph E. Pizzorno
26389 7590 09/21/2018
CHRISTENSEN O'CONNOR JOHNSON KINDNESS PLLC
1201 Third Avenue
Suite 3600
Seattle, WA 98101
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.
SALG131746 5716
EXAMINER
SEREBOFF, NEAL
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
09/21/2018 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):
efiling@cojk.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEPH E. PIZZORNO, ARNOLD K. EV ANS,
and BUCK LEVIN
Appeal2017-002355
Application 10/322,282 1
Technology Center 3600
Before BIBHU R. MOHANTY, MICHAEL C. ASTORINO, and
BART A. GERSTENBLITH, Administrative Patent Judges.
MOHANTY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1, 2, 4--18, 20-34, and 36-65, which are all the claims
pending in the application. We have jurisdiction under 35 U.S.C. § 6(b ).
SUMMARY OF THE DECISION
We AFFIRM.
1 The Appellants identify "Salugenecists, Inc." as the real party in interest
(App. Br. 1 ).
Appeal2017-002355
Application 10/322,282
THE INVENTION
The Appellants' claimed invention is directed to a system and method
for generating personalized health care advice (Spec. 1, para. 2). Claim 17,
reproduced below, is representative of the subject matter on appeal.
17. A computer implemented method useful for improving
artificial intelligence technology, the method comprising:
providing, by a first computer with a processor and a memory, a
healthcare expert system and a database for storing healthcare
information used by the expert system to generate the personalized
health care recommendations, the healthcare expert system
comprising a plurality of nodes and one or more links between the
plurality of nodes, wherein each node contains separate healthcare
information and wherein each link from a first node to a second node
of the plurality of nodes indicates a probability that the separate
healthcare information contained in the first node is related to the
separate healthcare information contained in the second node;
selecting, by the first computer, the separate healthcare
information from any node of the expert system and presenting
corresponding personalized smart questions to a user, wherein the
selection of the separate healthcare information is made according to
Bayesian probabilistic reasoning based on the probabilities indicated
by the one or more links between the pluralities of nodes of the expert
system;
obtaining, by the first computer, user related health information
and responses to the smart questions presented to the user;
ranking unanswered smart questions based in part on the
obtained user related health information and responses to the smart
questions;
generating the personalized health care recommendations using
the healthcare expert system for the user based on the user related
health information responses to the smart questions, and the ranked
unanswered smart questions; and
ranking for use by the user which is presented on a display
device the personalized health care recommendations based in part on
an associated efficacy of each personalized health care
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Application 10/322,282
recommendation so as to correct physiological dysfunction, wherein
the associated efficacy of each personalized health care
recommendation is determined in part by the health information.
THE REJECTION
The following rejection is before us for review:
1. Claims 1, 2, 4--18, 20-34, and 36-65 are rejected under 35
U.S.C. § 101 as being directed to non-statutory subject matter.
FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence. 2
ANALYSIS
Rejection under 35 USC§ 101
The Appellants argue that the rejection of claim 17 is improper (App.
Br. 29-44; Reply Br. 30-50). The Appellants argue that the claim has been
held improperly as an abstract idea without proper support (App. Br. 29-36,
38--41, 44; Reply Br. 30--43, 48). The Appellants also argue that the claim
has been held improperly to not be "significantly more" than the alleged
abstract idea (App. Br. 41--44; Reply Br. 45--48).
In contrast, the Examiner has determined that the rejection of record is
proper (Final Rej. 2, 3; Ans. 2-12).
2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
( explaining the general evidentiary standard for proceedings before the
Patent Office).
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Application 10/322,282
We agree with the Examiner. Under 35 U.S.C. § 101, 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 an implicit exception: "[l]aws of
nature, natural phenomena, and abstract ideas" are not patentable. See, e.g.,
Alice Corp. Pty Ltd. v. CLS Bank Int'!, 134 S. Ct. 2347, 2354 (2014).
In determining whether claim 1 7 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., 566 U.S. 66, 78-79 (2012)).
In accordance with that framework, we first determine whether the claim is
"directed to" a patent-ineligible abstract idea. If so, we then consider the
elements of the claim both individually and as "an ordered combination" to
determine whether the additional elements "transform the nature of the
claim" into a patent-eligible application of the abstract idea. Id. 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. The Court also stated that "the mere recitation of a
generic computer cannot transform a patent-ineligible abstract idea into a
patent-eligible invention." Id. at 2358.
Here, we determine that the claim is directed to the concept of using
stored health care information for a user to generate personalized health care
recommendations based on Bayesian probabilities. This is method of
organizing human activities and an idea in itself, and is an abstract idea
beyond the scope of§ 101. Here, the Specification states that the invention
is directed to a "method for generating personalized health care advice"
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Application 10/322,282
(Spec. para. 2). In Electric Power Group, LLC v. Alstom S.A., 830 F.3d
1350 (Fed. Cir. 2016), collecting information, analyzing it, and displaying
results from certain results of the collection and analysis was held to be an
abstract idea. "[A] process that employs mathematical algorithms to
manipulate existing information to generate additional information is not
patent eligible." See Digitech Image Techs, LLC v. Elecs.for Imaging, Inc.,
758 F.3d 1344, 1351 (Fed. Cir. 2014); see also In re Meyer, 688 F.2d 789,
795-96 (CCP A 1982) (holding that "a mental process that a neurologist
should follow" when testing a patient for nervous system malfunctions was
not patentable).
We next consider whether additional elements of the claim, both
individually and as an ordered combination, transform the nature of the
claim into a patent-eligible application of the abstract idea, e.g., whether the
claim does more than simply instruct the practitioner to implement the
abstract idea using generic computer components. We conclude that it does
not. The Specification, at page 7, describes using generic well-known
computer components, e.g., protocols such as HTTPS, server computers,
client computers, and web pages, in a conventional manner for their known
functions.
Considering each of the claim elements in tum, the function
performed by the computer system at each step of the process is purely
conventional. Each step of the claimed method does no more than require a
generic computer to perform a generic computer function.
We have fully considered the arguments presented in the Appeal Brief
at pages 29-44 and Reply Brief at pages 30-50, but these arguments are not
deemed persuasive to show that the rejection of record is improper. For
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these above reasons, the rejection of claim 17 is sustained. The Appellants
have not provided separate arguments for the dependent claims 18 and 20-
32. Regardless, a review of these claims has shown them to be drawn to
similar subject matter and the rejection of these claims is sustained for the
same reasons given above.
We reach the same conclusion as to independent system claims 1, 3 3,
49, 62, and their dependent claims, which are drawn to similar subject
matter. Here, as in Alice, "the system claims are no different in substance
from the method claims. The method claims recite the abstract idea
implemented on a generic computer; the system claims recite a handful of
generic computer components configured to implement the same idea."
Alice, 134 S. Ct. at 23 51. "[T]he mere recitation of a generic computer
cannot transform a patent-ineligible abstract idea into a patent-eligible
invention. Stating an abstract idea 'while adding the words 'apply it' is not
enough for patent eligibility." Id. at 2358 (quoting Mayo, 566 U.S. at 72).
Thus, for the same reasons discussed above, the rejection of claims 1, 2, 4--
17, 33, 34, and 36-65 under 35 U.S.C. § 101 is sustained.
CONCLUSIONS OF LAW
We conclude that Appellants have not shown that the Examiner erred
in rejecting claims 1, 2, 4--18, 20-34, and 36-65 under 35 U.S.C. § 101.
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DECISION
The Examiner's rejection of claims 1, 2, 4--18, 20-34, and 36-65 is
sustained.
AFFIRMED
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