Ex Parte Simons-Nikolova et al

Patent Trial and Appeal Board

Feb 23, 2018

13574939 (P.T.A.B. Feb. 23, 2018)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/574,939 07/24/2012 Mariana Simons-Nikolova 2010P00311WOUS 2854
24737 7590 02/27/2018
PTTTT TPS TNTFT T FfTTTAT PROPFRTY fr STANDARDS
EXAMINER
465 Columbus Avenue PATEL, NEHA
Suite 340
Valhalla, NY 10595 ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
02/27/2018 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 SIMONS-NIKOLOVA,
ALEKSANDRA TESANOVIC, ROB THEODORUS UDINK, and
JOSEPH E. ROCK
Appeal 2016-005930
Application 13/574,93 91
Technology Center 3600
Before THU A. DANG, JOHN P. PINKERTON, and
MATTHEW J. McNEILL, Administrative Patent Judges.
McNEILL, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 6, 7, 9-16, and 21-29, which are all the claims pending
in this application. Claims 2-5, 8, and 17-20 were cancelled. App. Br.
9-11. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is Koninklijke Philips
N.V. App. Br. 2.
Appeal 2016-005930
Application 13/574,939
STATEMENT OF THE CASE
Introduction
Appellants’ application relates to a method and system for guidelines-
based discharge planning of a patient from a facility. Abstract. Claim 1
illustrates the appealed subject matter and reads as follows:
1. A method for creating, in electronic format, an actionable
care plan for a discharged patient, comprising:
determining via a processor that a patient meets
predetermined discharge criteria of a facility, and generating
data indicative thereof;
generating a first signal indicative of a numerical value of
a patient's risk of re-admission to the facility in response to the
generated data;
generating via the processor the actionable care plan,
which provides a plan of care for the patient, based at least in
part on the numerical value, wherein the actionable care plan
includes a patient's risk of re-hospitalization during a
predetermined post-discharge period where the patient's risk of
re-hospitalization is based on the numerical value, a risk score
that quantifies the risk, a quantification of contributing
parameters to the risk, and a recommended action step to reduce
the risk;
generating a third signal that discharges the patient from
the facility in response to the data indicating the patient satisfies
the discharge criteria;
constructing via the processor a visual display of the
actionable care plan; and
displaying the constructed visual display and the third
signal with a hardware-implemented display monitor.
The Examiner’s Rejections
Claims 1, 6, 7, 9-16, and 21-29 stand rejected under 35 U.S.C. § 101
as being directed to patent-ineligible subject matter. Final Act. 2^1.
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Application 13/574,939
Claims 1, 6, 7, 9-15, 21-27, and 29 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Osgood (US 2008/0033760 Al; Feb. 7, 2008)
and Wariar et al. (US 2008/0228090 Al; Sept. 18, 2008). Final Act. 6-13.
Claims 16 and 28 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Osgood, Wariar, and Rafiiar et al. (US 2011/0212855 Al;
Sept. 1,2011). Final Act. 13.
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contentions that the Examiner has erred. We disagree with Appellants’
contentions. Except as noted below, we adopt as our own: (1) the findings
and reasons set forth by the Examiner in the Final Action from which this
appeal is taken; and (2) the reasons set forth by the Examiner in the
Examiner’s Answer in response to Appellants’ Appeal Brief. We concur
with the Examiner’s conclusions. We highlight the following additional
points.
Patent-Ineligible Subject Matter
Alice identifies a two-step framework for determining whether
claimed subject matter is judicially-excepted from patent eligibility under
§101. In Alice, the Supreme Court reiterated the framework set out in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289
(2012), for “distinguishing patents that claim . . . abstract ideas from those
that claim patent-eligible applications of those concepts.” Alice Corp. Pty.
Ltd. v. CLSBanklnt’l, 134 S. Ct. 2347, 2355 (2014). Assuming that a claim
nominally falls within one of the statutory categories of machine,
manufacture, process, or composition of matter, the first step in the analysis
is to determine if the claim is directed to a law of nature, a natural
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phenomenon, or an abstract idea (judicial exceptions). Id. If so, the second
step is to determine whether any element or combination of elements in the
claim is sufficient to transform the nature of the claim into a patent eligible
application, that is, to ensure that the claim amounts to significantly more
than the judicial exception. Id.
Appellants argue the Examiner erred in rejecting claim 1 as directed
to patent-ineligible subject matter. App. Br. 4; Reply Br. 3—4. With regard
to step one, Appellants argue claim 1 does not tie up creating an actionable
care plan in an electronic format for a discharged patient. App. Br. 4.
Appellants argue an actionable care plan could be based on other
information and the information used in the claims to create an actionable
care plan could be used for other purposes. Id. According to Appellants,
claim 1, therefore, is not directed to an abstract idea.
We disagree. Claim 1 recites a method for creating an actionable care
plan, where the method includes steps directed to determining whether a
patient meets predetermined discharge criteria, generating a numerical value
of a patient’s risk of re-admission, generating an actionable care plan based
on the numerical value, and discharging the patient. The steps recited in the
claims involve nothing more than collecting, normalizing, analyzing, and
acting upon data. The subject matter of the claims can be performed either
mentally or with “pencil and paper.” CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1371 (Fed. Cir. 2011). “[A] method that can
be performed by human thought alone is merely an abstract idea and is not
patent-eligible under § 101.” Id. at 1373.
In this regard, the claims are similar to the claims that the Federal
Circuit determined are patent ineligible in Electric Power Group LLC v.
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Alstom S.A., 830 F.3d 1350, 1353—54 (Fed. Cir. 2016) (collecting
information and “analyzing information by steps people go through in their
minds, or by mathematical algorithms, without more, [are] essentially
mental processes within the abstract-idea category”), OIP Technologies, Inc.
v. Amazon.com, Inc., 788 F.3d 1359, 1362—63 (Fed. Cir. 2015) (offer-based
price optimization), Intellectual Ventures ILLC v. Capital One Bank (USA),
792 F.3d 1363, 1370 (Fed. Cir. 2015) (tailoring information presented to a
user based on particular information), Digitech Image Technologies, LLC v.
Electronics for Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014 (employing
mathematical algorithms to manipulate existing information), Accenture
Global Services, GmbHv. Guidewire Software, Inc., 728 F.3d 1336, 1346
(Fed. Cir. 2013) (generating tasks in an insurance organization), and Versata
Development Group v. SAP America, 793 F.3d 1306, 1333—24 (Fed. Cir.
2015) (price-determination method involving arranging organizational and
product group hierarchies).
Moreover, 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). 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
ILLC v. Capital One Fin. Corp., 850 F.3d 1332, 1340 (Fed. Cir. 2017).
Also, the gathering and combining of data that does not require input from a
physical device is an abstract idea. Digitech Image Techs., LLC v. Elec, for
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Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014). Our reviewing court
has also concluded that “creating an index and using that index to search for
and retrieve data” is an abstract idea. Intellectual Ventures ILLC v. Erie
Indem. Co., 850 F.3d 1315, 1327 (Fed. Cir. 2017).
Moreover, we are unpersuaded by Appellants’ argument that the
claims do not preempt every manner of creating an actionable care plan and
are, therefore, patentable. App. Br. 4. Lack of preemption does not make
the claims any less abstract. See buySAFE, Inc. v. Google, Inc., 765 F.3d
1350, 1355 (Fed. Cir. 2014) (collecting cases); Accenture Glob. Servs.,
GmbHv. Guidewire Software, Inc., 728 F.3d 1336, 1345 (Fed. Cir. 2013);
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015) (“While preemption may signal patent ineligible subject matter, the
absence of complete preemption does not demonstrate patent eligibility”).
For these reasons, we agree with the Examiner that claim 1 is directed to an
abstract idea.
Turning to step two, Appellants argue creating an actionable care plan
as claimed is not a well-understood, routine, or conventional activity
previously known to the industry. App. Br. 4. Appellants further argue the
claims effect a transformation through discharge criteria and a numerical
value of a patient’s risk of readmission, wherein the numerical value is
visually displayed by a display monitor. Id.
Appellants have not persuaded us of Examiner error. Our reviewing
court has “made clear that mere automation of manual processes using
generic computers does not constitute a patentable improvement in computer
technology.” Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044,
1055 (Fed. Cir. 2017). Like the claims in Credit Acceptance, the focus of
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the claims here is on the business practice (creating an actionable care plan
for a patient), “and the recited generic computer elements ‘are invoked
merely as a tool.’” Id. (citing Enfish, LLC v. Microsoft Corp., 822 F.3d
1327 (Fed. Cir. 2016)); see also Versata Dev. Grp., Inc. v. SAP Am., Inc.,
793 F.3d 1306, 1334 (Fed. Cir. 2015) (collecting cases). Moreover,
Appellants’ argument regarding the display monitor is also unpersuasive
because the prohibition against patenting an abstract idea “‘cannot be
circumvented by attempting to limit the use of the formula to a particular
technological environment’ or adding ‘insignificant postsolution activity.’”
Bilski v. Kappos, 561 U.S. 593, 610—11 (2010) (citation omitted).
We are also unpersuaded by Appellants’ argument that the claimed
creation of an actionable care plan is not a well-understood, routine, or
conventional activity previously known to the industry. Although the
second step of the Alice framework is termed a search for an “inventive
concept,” the analysis is not an evaluation of novelty or non-obviousness,
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 Corp., 134 S. Ct. at
2355 (alteration in original). A novel and nonobvious claim directed to a
purely abstract idea is, nonetheless, patent-ineligible. See Mayo, 132 S. Ct.
at 1304. As explained above, Appellants’ claims do not recite significantly
more than the abstract idea of creating an actionable care plan.
Accordingly, we agree with the Examiner that the claims do not recite
an “inventive concept” sufficient to transform the claims from an abstract
idea to a patent eligible application. We, therefore, sustain the Examiner’s
rejection of claim 1 as directed to patent-ineligible subject matter. We also
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sustain the rejection of independent claim 21 and dependent claims 6, 7, 9-
16, and 22-29, for which Appellants do not provide separate argument. See
App. Br. 4.
Obviousness
Appellants argue the Examiner erred in rejecting claim 1 as
unpatentable over Osgood and Wariar. App. Br. 5-6; Reply Br. 2. In
particular, Appellants argue Wariar does not teach or suggest “generating via
the processor the actionable care plan . . . wherein the actionable care plan
includes a patient’s risk of re-hospitalization during a predetermined post­
discharge period.” App. Br. 5. Appellants argue Wariar teaches analyzing
parameter 400 prior to discharge to determine a patient’s risk of re­
hospitalization, but Wariar does not teach assessing risk of re-hospitalization
after the patient meets the predetermined discharge criteria. App. Br. 6.
The Examiner finds an ordinarily skilled artisan would have been
motivated to add Wariar’s parameter 400, which assesses a patient’s risk of
re-hospitalization, to Osgood’s discharge decision and actionable care plan.
Ans. 8-9. The Examiner finds an ordinarily skilled artisan would have been
motivated to make such a combination because it would improve the
accuracy of decision making, reduce the risk of readmission, and reduce
health care costs. Ans. 9.
Appellants respond in the Reply Brief that merely adding the
numerical value to the actionable care plan does not satisfy the claim
language because claim 1 “generates the actionable care plan based at least
in part on the numerical value and [does] not merely add[] the numerical
value [to] an actionable care plan.” Reply Br. 2. Appellants further argue:
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the mere fact that a certain thing may result from a given set of
circumstances is not sufficient, and the extrinsic evidence must
make clear that the missing descriptive matter is necessarily
present in the thing described in the reference, and that it would
be so recognized by persons of ordinary skill.
Id. According to Appellants, the Examiner failed to establish that adding the
numerical value to the actionable care plan would improve the accuracy of
decision making, reduce the risk of readmission, or reduce health care cost.
Id.
Appellants have not persuaded us of Examiner error. The Examiner
finds, and we agree, Wariar teaches that during hospitalization mode (i.e.,
prior to patient discharge), heart failure management module 368 analyzes
therapy efficacy, produces therapy adjustment signals when necessary, and
assesses risk of re-hospitalization using parameter 400. Ans. 7; Wariar | 33.
Wariar teaches using parameter 400 to determine a risk parameter for a
patient and using that risk parameter as part of the discharge decision. Ans.
7-8 (citing Wariar 6, 7, 31 45). The Examiner also finds, and we agree,
Osgood teaches using data parameters to make a discharge decision and
create an actionable care plan. Ans. 8 (citing Osgood Fig. 4, | 6).
The Examiner further finds, and we agree, an ordinarily skilled artisan
would have been motivated to add Wariar’s parameter 400, which Wariar
teaches using to produce therapy adjustment signals (i.e., modifying a
patient’s care plan), to the data parameters used to create Osgood’s
actionable care plan because such an addition would improve the accuracy
of decision making, reduce the risk of readmission, or reduce health care
cost. Appellants have not persuasively argued that the Examiner’s findings
regarding an ordinarily skilled artisan’s motivation are in error. Appellants’
arguments focus on the inherency of such motivation (“the extrinsic
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evidence must make clear that the missing descriptive matter is necessarily
present in the thing described in the reference” (Reply Br. 2)), but the
Examiner does not rely on inherency in his obviousness findings. Instead,
the Examiner finds an ordinarily skilled artisan would have taken the
combined teachings and suggestions of the references to create the claimed
subject matter.
Appellants have not persuaded us these findings are in error. We,
therefore, sustain the rejection of independent claim 1 as unpatentable over
Osgood and Wariar. We also sustain the obviousness rejections of
independent claim 21, as well as dependent claims 6, 7, 9-15, 22-27, and
29, for which Appellants do not offer separate arguments. App. Br. 6. We
also sustain the rejection of claims 16 and 28 as unpatentable over Osgood,
Wariar, and Rafnar, for which Appellants rely on the same arguments.
App. Br. 7.
DECISION
We affirm the decision of the Examiner rejecting claims 1, 6, 7, 9-16,
and 21-29.
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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