Ex Parte TESANOVIC et al

Patent Trial and Appeal Board

Feb 22, 2019

13909779 (P.T.A.B. Feb. 22, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/909,779 06/04/2013 ALEKSANDRA TESANOVIC
24737 7590 02/26/2019
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.
2012P00533US 4833
EXAMINER
HEIN, DEVIN C
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
02/26/2019 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 ALEKSANDRA TESANOVIC,
JAN JOHANNES GERARDUS DE VRIES,
and GIJS GELEIJNSE
Appeal2017-003452
Application 13/909,779 1
Technology Center 3600
Before ANTON W. PETTING, BRUCE T. WIEDER, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE2
Aleksandra Tesanovic, Jan Johannes Gerardus De Vries, and
Gijs Geleijnse (Appellants) seek review under 35 U.S.C. § 134 of a final
rejection of claims 1, 3, and 6-12, the only claims pending in the application
1 According to Appellants, the real party in interest is Koninklijke Philips
N.V. (App. Br. 2).
2 Our Decision will make reference to the Appellants' Appeal Brief ("App.
Br.," filed September 28, 2016) and Reply Brief ("Reply Br.," filed
December 19, 2016), and the Examiner's Answer ("Ans.," mailed November
3, 2016), and Final Office Action ("Final Act.," mailed May 2, 2016).
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Application 13/909,779
on appeal. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).
The Appellants invented a way of determining care for a patient.
Spec. 1 :2--4.
An understanding of the invention can be derived from a reading of
exemplary claim 12, which is reproduced below (bracketed matter and some
paragraphing added).
12. A healthcare support method for determining care for a
patient comprising the steps of:
[ 1] obtaining patient data;
[2] assessing a clinical need of the patient;
[3] proposing a desired clinical outcome;
[ 4] determining at least one service to be provided to the patient
for the clinical need and the proposed clinical outcome;
[5] determining at least one clinical side effect resulting from
each service;
[6] creating a service-outcome-need model, wherein the service-
outcome-need model provides a relationship between the service
provided to the patient, the proposed clinical outcome, the
clinical need of the patient, each clinical side effect, and a
certainty measure for the proposed clinical outcome and each
clinical side effect;
and
[7] creating a service database based on patient data wherein for
each service there is an instance of the service-outcome-need
model;
[8] filtering the service database using a plurality of patient-
specific parameters derived from the patient data such that an
optimal service is identified, the patient-specific parameters
compnsmg:
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and
a current care location, wherein the current care location
is one of a hospital, an out patient clinic, a general
practitioner, a nursing home, or the patient's home;
a target care location, wherein the target care location is
one of a hospital, an out patient clinic, a general
practitioner, a nursing home, or the patient's home;
ineffective services previously applied to the patient;
effective services previously applied to the patient;
a maximum cost, the maximum cost being derived from
the patient's financial situation and insurance status;
and
an educational need comprising the capacity to provide
self-care;
[9] determining an optimal service.
The Examiner relies upon the following prior art:
Ennett
Morris
Utterback
US 2009/0094063 Al Apr. 9, 2009
US 2010/0198571 Al Aug. 5, 2010
US 2011/0137670 Al
Rhine-Pallas US 2012/0035958 Al
June 9, 2011
Feb.9,2012
Claims 1, 3, and 6-12 stand rejected under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more.
Claims 1, 3, 6, and 8-12 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Utterback, Morris, and Rhine-Pallas.
Claim 7 stands rejected under 35 U.S.C. § I03(a) as unpatentable over
Utterback, Morris, Rhine-Pallas, and Ennett.
ISSUES
The issues of eligible subject matter tum primarily on whether the
claims recite more than abstract conceptual advice of what a computer is to
provide without implementation details.
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The issues of obviousness tum primarily on whether the art describes
using current and target locations as service database filter criteria.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to the Prior Art
Utterback
01. Utterback is directed to clinical care of a patient and, more
particularly, facilitating development and execution of a clinical
care plan. Utterback para. 1.
02. Utterback describes automatic determination of one or more
problems facing a patient and generation of a care plan to address
the determined care problems based on patient assessment data.
Utterback para. 4.
Morris
03. Morris is directed to techniques useful in computers for
associating intervention data with simulated healthcare processes.
Morris para. 2.
Rhine-Pallas
04.Rhine-Pallas is directed to a comprehensive healthcare
management system for screening patients for one or more
diseases, assessing patients' healthcare status, and providing
recommended actions to address the diseases. Rhine-Pallas para.
2.
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05. Rhine-Pallas describes a method of managing patient healthcare.
First, a patient profile is created, which includes patient data for a
patient. The patient is then screened for a disease based on the
patient profile. Thereafter, at least one test is identified to assess a
state of the disease based on the patient profile, and the state of the
disease is assessed based upon results of the test. The patient
profile is updated accordingly to include the results of the at least
one test and the assessed disease state. Based on a comparison of
the updated patient profile to at least one predefined criterion
regarding progression of the disease, a health management status
of the patient with respect to the disease is determined. In certain
embodiments, the health management status of the patient
includes different stages of progression of the disease. A
recommended action is then provided, and implemented to address
the disease. Rhine-Pallas para. 9.
06.Rhine-Pallas describes the recommended action including
providing transition services to the patient. The transition services
can include education, training, adherence, reimbursement
assistance, counseling, and transportation for a patient, and can
further include services that allow a patient to be transitioned from
in-patient care setting to ambulatory, home, or other settings, such
as home health monitoring. Rhine-Pallas para. 194.
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ANALYSIS
Claims 1, 3, and 6-12 rejected under 35 US.C. § 101 as directed to a
judicial exception without significantly more
STEPP.
Claim 12, as a method claim, nominally recites one of the enumerated
categories of eligible subject matter in 35 U.S.C. § 101. The issue before us
is whether it is directed to a judicial exception without significantly more.
STEP 2
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, ...
determine whether the claims at issue are directed to one of those
patent-ineligible concepts .... If so, we then ask, "[ w ]hat else is
there in the claims before us?" ... To answer that question, ...
consider the elements of each 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 .... [The Court] described step two of this
analysis 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 Corp. Pty. Ltd. v. CLS Banklnt'l, 573 U.S. 208, 217-18 (2014) (citing
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012)).
To perform this test, we must first determine what the claims are directed to.
This begins by determining whether the claims recite one of the judicial
3 For continuity of analysis, we adopt the steps nomenclature from 2019
REVISED PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50
(Jan. 7, 2019) (hereinafter "2019 Guidance").
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exceptions (a law of nature, a natural phenomenon, or an abstract idea).
Then, if claims recite a judicial exception, determining whether the claims at
issue are directed to the recited judicial exception, or whether the recited
judicial exception is integrated into a practical application of that exception,
i.e., that the claims "apply, rely on, or use the judicial exception in a manner
that imposes a meaningful limit on the judicial exception, such that the claim
is more than a drafting effort designed to monopolize the judicial
exception." 2019 Guidance at 54. If the claims are directed to a judicial
exception, then finally determining whether the claims provide an inventive
concept because the additional elements recited in the claims provide
significantly more than the recited judicial exception.
STEP 2A Prong 1
Method claim 12 recites obtaining data, assessing a clinical need,
proposing a desired outcome, determining a service and a resulting side
effect, creating a model, and creating and filtering a database to identify and
determine an optimal service meeting recited criteria. Assessing an outcome
and determining a service and side effect, absent any implementation details,
is no more than data retrieval, albeit based on perhaps some criteria.
Creating a model and database, again without any implementation details, is
data retrieval, analysis, and modification based on model and database
parameters, as the data for forming the model and database must come from
somewhere and be somehow altered to result in the model and database.
Thus, claim 12 recites retrieving, analyzing, and modifying data. None of
the limitations recite technological implementation details for any of these
steps, but instead recite only functional results to be achieved by any and all
possible means.
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From this we see that claim 12 does not recite the judicial exceptions
of either natural phenomena or laws of nature. The next issue is whether it
recites the judicial exception of an abstract idea. To answer this, we next
determine whether it recites one of the concepts the Courts have held to be
lacking practical application, viz., mathematical concepts4, certain methods
of organizing human interactions 5, including fundamental economic
practices and business activities, or mental processes6•
The Examiner determines the claims to be directed to using a
mathematical model to determine an optimal healthcare service based on
patient needs and a proposed outcome. Final Act. 3.
The preamble to claim 12 recites that it is a healthcare support method
for determining care for a patient. The steps in claim 12 result in
determining an optimal service based on model and database absent any
technological mechanism other than a conventional computer for doing so.
As to the specific limitations, limitations 1, 4, 5, and 9 recite
insignificant retrieving, analyzing, and modifying of healthcare data, which
advise one to apply generic functions to get to these results. Steps 2 and 3
4 See, e.g., Gottschalkv. Benson, 409 U.S. 63, 71-72 (1972); Bilski v.
Kappas, 561 U.S. 593, 611 (2010); Mackay Radio & Telegraph Co. v. Radio
Corp. of Am., 306 U.S. 86, 94 (1939); SAP Am., Inc. v. InvestPic, LLC, 898
F.3d 1161, 1163 (Fed. Cir. 2018).
5 See, e.g., Bilski, 561 U.S. at 628; Alice, 573 U.S. at 219-20; Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed Cir. 2014); Smart Sys.
Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1383 (Fed. Cir.
2017); In re Marco Guldenaar Holding B. V., 911 F.3d 1157, 1160--61 (Fed.
Cir. 2018).
6 See, e.g., Benson, 409 U.S. at 67; CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1371-72 (Fed. Cir. 2011); Intellectual Ventures I LLC
v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016).
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recite human judgment in the form of assessing a clinical need and
proposing a desired clinical outcome. Alternately, they are data gathering
based on data derived from such human judgment. Limitations 6-8 are the
only steps associated with actually performing what the claim produces and
recite creating a model and database and filtering the database, which is
simply generic advice to create such a model and database and filter it. To
advocate generic advice to create such a model and database and filter it is
conceptual advice for results to be obtained and not technological
operations.
The Specification at 1 :2--4 describes the invention as relating to
determining care for a patient. Thus, all this intrinsic evidence shows that
claim 12 is directed to identifying an optimal service based on some model
and set of data, i.e., finding an optimal solution. This is consistent with the
Examiner's determination.
The concept of finding an optimal solution is a fundamental business
and medical practice long prevalent in our system of commerce and
medicine. The use of finding an optimal solution is also a building block of
ingenuity in the mathematical study of operations research. Thus, finding an
optimal solution is an example of a conceptual idea subject to the Supreme
Court's "concern that patent law not inhibit further discovery by improperly
tying up the future use of these building blocks of human ingenuity." See
Alice, 573 U.S. at 216 (internal citations omitted). Claim 12 recites the idea
of performing various conceptual steps generically resulting in the finding of
an optimal solution. As we determined earlier, none of these steps recite
specific technological implementation details, but instead get to this result
by advising one to use a model and filtered dataset derived from pertinent
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data to identify an optimal solution. Thus, claim 12 is directed to finding an
optimal solution, which is a fundamental business and medical practice.
This in tum is an example of commercial or legal interactions and
managing personal behavior or relationships or interactions between people
as a certain method of organizing human interactions, because finding an
optimal solution for a plan of action is both part of planning how members
of an organization are to proceed in a coordinated manner and a commercial
activity toward solving an issue in a corporate context. The concept of
finding an optimal solution as advised to be done by use of a model and
filtered dataset derived from pertinent data to identify an optimal solution is
abstract conceptual advice to come up with some model and data to test the
ideas on. The steps recited in claim 12 are part of coming up with that
model and data.
Our reviewing court has found claims to be directed to abstract ideas
when they recited similar subject matter. OIP Techs., Inc. v. Amazon.com,
Inc., 788 F.3d 1359, 1362 (Fed. Cir. 2015) (price optimization).
Alternately, this is an example of concepts performed in the human
mind as mental processes because the steps of retrieving, analyzing, and
modifying data mimic human thought processes of observation, evaluation,
judgment, and opinion, perhaps with paper and pencil, where the data
interpretation is perceptible only in the human mind. See In re TL!
Commc 'ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir.
2016). Claim 12, unlike the claims found non-abstract in prior cases, uses
generic computer technology to perform data retrieval, analysis, and
modification and does not recite an improvement to a particular computer
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technology. See, e.g., McRO, Inc. v. Bandai Namco Games Am. Inc., 837
F.3d 1299, 1314--15 (Fed. Cir. 2016) (finding claims not abstract because
they "focused on a specific asserted improvement in computer animation").
As such, claim 12 is directed to the abstract idea of retrieving, analyzing,
and modifying data, and not a technological implementation or application
of that idea.
Alternately, this is an example of a mathematical concept because the
steps of creating a model and finding an optimal solution perform an
operational research optimization mathematical algorithm. The remaining
steps are mere data gathering and incidental post processing steps.
From this we conclude that at least to this degree, claim 12 is directed
to the abstract idea of finding an optimal solution by advising one to use a
model and filtered dataset derived from pertinent data to identify an optimal
solution.
STEP 2A Prong 2
The next issue is whether claim 12 not only recites, but is more
precisely directed to this concept itself or whether it is instead directed to
some technological implementation or application of, or improvement to,
this concept, i.e., integrated into a practical application. 7
At the same time, we tread carefully in construing this
exclusionary principle lest it swallow all of patent law .... At
some level, "all inventions ... embody, use, reflect, rest upon, or
apply laws of nature, natural phenomena, or abstract ideas." ...
Thus, an invention is not rendered ineligible for patent simply
because it involves an abstract concept. ... "[ A Jpplication[ s ]" of
7 See, e.g., Alice, 573 U.S. at 223, discussing Diamond v. Diehr, 450 U.S.
175 (1981).
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such concepts " 'to a new and useful end,' " we have said, remain
eligible for patent protection .... Accordingly, in applying the
§ 101 exception, we must distinguish between patents that claim
the " 'buildin[g] block[ s]' " of human ingenuity and those that
integrate the building blocks into something more.
Alice, 573 U.S. at 217 (internal citations omitted).
The introduction of a computer into the claims does not alter the
analysis at Mayo step two.
[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. Nor is limiting the use of an abstract
idea "'to a particular technological environment."' Stating an
abstract idea while adding the words "apply it with a computer"
simply combines those two steps, with the same deficient result.
Thus, if a patent's recitation of a computer amounts to a mere
instruction to "implemen[ t ]" an abstract idea "on . . . a
computer," that addition cannot impart patent eligibility. This
conclusion accords with the preemption concern that undergirds
our § 101 jurisprudence. Given the ubiquity of computers, wholly
generic computer implementation is not generally the sort of
"additional featur[ e ]" that provides any "practical assurance that
the process is more than a drafting effort designed to monopolize
the [ abstract idea] itself."
Alice, 573 U.S. at 223-24 (internal citations omitted).
"[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea ... on a
generic computer." Alice, 573 U.S. at 225. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely functional, devoid of
implementation details. Steps 1, 4, and 5 are pure data gathering steps.
Limitations describing the nature of the data do not alter this. Step 9 is
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insignificant post solution activity, such as storing, transmitting, or
displaying the results. Steps 2 and 3 recite human judgment in the form of
assessing a clinical need and proposing a desired clinical outcome.
Alternately, they are data gathering based on data derived from such human
judgment. Steps 6-8 recite generic computer processing expressed in
functional terms to be performed by any and all possible means and so
present no more than abstract conceptual advice. All purported inventive
aspects reside in how the data is interpreted and the results desired, and not
in how the process physically enforces such a data interpretation or in how
the processing technologically achieves those results.
Viewed as a whole, Appellants' claim 12 simply recites the concept of
finding an optimal solution as performed by a generic computer. To be sure,
claim 12 recites doing so by advising one to use a model and filtered dataset
derived from pertinent data to identify an optimal solution. But this is no
more than abstract conceptual advice on the parameters for such finding an
optimal solution and the generic computer processes necessary to process
those parameters, and do not recite any particular implementation.
Claim 12 does not, for example, purport to improve the functioning of
the computer itself. Nor does it effect an improvement in any other
technology or technical field. The 17 pages of written description in the
specification do not bulge with disclosure, but only spell out different
generic equipment8 and parameters that might be applied using this concept
and the particular steps such conventional processing would entail based on
the concept of finding an optimal solution under different scenarios. They
8 The Specification describes the computer requirements as being those of a
general purpose computer. Spec. 17:3-9.
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do not describe any particular improvement in the manner a computer
functions. Instead, claim 12 at issue amounts to nothing significantly more
than an instruction to apply the abstract idea of finding an optimal solution
by advising one to use a model and filtered dataset derived from pertinent
data to identify an optimal solution using some unspecified, generic
computer. Under our precedents, that is not enough to transform an abstract
idea into a
patent-eligible invention. See Alice, 573 U.S. at 225-26.
None of the limitations reflect an improvement in the functioning of a
computer, or an improvement to another technology or technical field,
applies or uses a judicial exception to effect a particular treatment or
prophylaxis for a disease or medical condition, implements a judicial
exception with, or uses a judicial exception in conjunction with, a particular
machine or manufacture that is integral to the claim, effects a transformation
or reduction of a particular article to a different state or thing, or applies or
uses the judicial exception in some other meaningful way beyond generally
linking the use of the judicial exception to a particular technological
environment, such that the claim as a whole is more than a drafting effort
designed to monopolize the exception.
We conclude that claim 12 is directed to advising one to use a model
and filtered dataset derived from pertinent data to identify an optimal
solution to achieve the functional result of finding an optimal solution as
distinguished from a technological improvement for achieving or applying
that result. The claim does not integrate the judicial exception into a
practical application.
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STEP 2B
The next issue is whether claim 12 provides an inventive concept
because the additional elements recited in the claim provide significantly
more than the recited judicial exception. Taking the claim elements
separately, the function performed by the computer at each step of the
process is purely conventional. Using a computer for retrieving, analyzing,
and modifying data amounts to electronic data query and retrieval----one of
the most basic functions of a computer. All of these computer functions are
generic, routine, conventional computer activities that are performed only
for their conventional uses. See Elec. Power Grp. v. Alstom S.A., 830 F.3d
1350, 1353 (Fed. Cir. 2016). Also see In re Katz Interactive Call Processing
Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011) ("Absent a possible
narrower construction of the terms 'processing,' 'receiving,' and 'storing,' ..
. those functions can be achieved by any general purpose computer without
special programming"). None of these activities are used in some
unconventional manner nor do any produce some unexpected result.
Appellants do not contend they invented any of these activities. In short,
each step does no more than require a generic computer to perform generic
computer functions. As to the data operated upon, "even if a process of
collecting and analyzing information is 'limited to particular content' or a
particular 'source,' that limitation does not make the collection and analysis
other than abstract." SAP Am., 898 F.3d at 1168.
Considered as an ordered combination, the computer components
of Appellants' claim 12 add nothing that is not already present when
the steps are considered separately. The sequence of data
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retrieval-analysis-modification is equally generic and conventional or
otherwise held to be abstract. See Ultramercial, 772 F.3d at 715 (sequence
of receiving, selecting, offering for exchange, display, allowing access, and
receiving payment recited an abstraction), Inventor Holdings, LLC v. Bed
Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017) (sequence of
data retrieval, analysis, modification, generation, display, and transmission),
Two-Way Media Ltd. v. Comcast Cable Commc 'ns, LLC, 874 F.3d 1329,
1339 (Fed. Cir. 2017) (sequence of processing, routing, controlling, and
monitoring). The ordering of the steps is, therefore, ordinary and
conventional.
We conclude that claim 12 does not provide an inventive concept
because the additional elements recited in the claim does not provide
significantly more than the recited judicial exception.
REMAINING CLAIMS
As to the independent structural claim, it is
no different from the method claims in substance. 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. This Court
has long "warn[ ed] ... against" interpreting § 101 "in ways that
make patent eligibility 'depend simply on the draftsman's art."'
Alice, 573 U.S. at 226 (internal citations omitted). The dependent claims
merely describe process parameters. As a corollary, the claims are not
directed to any particular machine. We conclude that the claims at issue are
directed to a patent-ineligible concept itself, and not to the practical
application of that concept.
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LEGAL CONCLUSION
From these determinations, we further determine that the claims do
not recite an improvement to the functioning of the computer itself or to any
other technology or technical field, a particular machine, a particular
transformation, or other meaningful limitations. From this we conclude the
claims are directed to the judicial exception of the abstract idea of finding an
optimal solution, without significantly more.
APPELLANTS' ARGUMENTS
As to Appellants' Appeal Brief arguments, we adopt the Examiner's
determinations and analysis from Final Action 2-5 and Answer 2-7 and
reach similar legal conclusions. We now tum to the Reply Brief.
We are not persuaded by Appellants' argument that the claims are
analogous to those in Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed.
Cir. 2016). Reply Br. 2--4. The claims differ from those found patent
eligible in Enfzsh, where the claims were "specifically directed to a
self-referential table for a computer database." 822 F.3d 1327, 1337 (Fed.
Cir. 2016). The claims, thus, were "directed to a specific improvement to
the way computers operate" rather than an abstract idea implemented on
a computer. Id. at 1336. Here, by contrast, the claims are not directed
to an improvement in the way computers operate. Though the claims
purport to accelerate the process of using a model to find a solution, our
reviewing court has held that speed and accuracy increases stemming
from the ordinary capabilities of a general purpose computer "do[] not
materially alter the patent eligibility of the claimed subject
matter." Bancorp Servs., L.L. C. v. Sun Life Assurance Co. of Can. (US.),
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687 F.3d 1266, 1278 (Fed. Cir. 2012). Instead, the claims are more
analogous to those in FairWarning, 839 F.3d 1089 (Fed. Cir. 2016),
wherein claims reciting "a few possible rules to analyze audit log data"
were found to be directed to an abstract idea because they asked "the
same questions (though perhaps phrased with different words) that
humans in analogous situations detecting fraud have asked for decades."
FairWarning, 839 F.3d at 1094, 1095.
We are not persuaded by Appellants' argument that the
claims recite limitations that allow determined medical services
to be calibrated across care settings, including for example the
patient's home, and through the natural progression of patients'
condition. (See Id., p. 3 11. 8-12). The recited "service-outcome-
need model" is a technological solution to existing patient care
models, and the recited "service database" encompassing the
service-outcome-need models is a technological improvement
over conventional databases. (See Id., p. 4 11. 18-33; p. 5 11. 16-
23). The recited "processor" performs its retrieval duties more
efficiently by updating the service database constantly, providing
a feedback mechanism for providing input on the effectiveness
of a proposed service for a patient.
Reply Br. 3. A model is a representation, whose interpretation is discernible
only in the human mind, and, therefore, an abstraction as it literally abstracts
a limited number of characteristics. Again, reciting a computer to improve
speed and accuracy does not materially alter the patent eligibility of the
claimed subject matter.
Appellants also attempt to analogize the claims to those involved in
McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed.
Cir. 2016). Reply Br. 4--5. In McRO, the court held that, although the
processes were previously performed by humans, "the traditional process
and newly claimed method ... produced ... results in fundamentally
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different ways." FairWarning, 839 F.3d at 1094 (differentiating the
claims at issue from those in McRO). In McRO, "it was the incorporation
of the claimed rules not the use of the computer, that improved the
existing technology process," because the prior process performed by
humans "was driven by subjective determinations rather than specific,
limited mathematical rules." 837 F.3d at 1314 (internal quotation marks,
citation, and alterations omitted). In contrast, the claims of the instant
application merely implement an old practice of using decision criteria in
making optimization decisions in a new environment. Appellants have not
argued that the claimed processes of selecting services apply rules of
selection in a manner technologically different from those which humans
used, albeit with less efficiency, before the invention was claimed. Merely
pigeonholing the objects of decision making in filters to aid decision making
is both old and itself abstract.
The claims in McRO were not directed to an abstract idea, but
instead were directed to "a specific asserted improvement in
computer animation, i.e., the automatic use of rules of a
particular type." . . . We explained that "the claimed
improvement [was] allowing computers to produce 'accurate and
realistic lip synchronization and facial expressions in animated
characters' that previously could only be produced by human
animators." . . . The claimed rules in McRO transformed a
traditionally subjective process performed by human artists into
a mathematically automated process executed on computers.
FairWarning, 839 F.3d at 1094 (internal citations omitted) (differentiating
the claims at issue from those in McRO).
We are not persuaded by Appellants' argument that the claims contain
an inventive concept that is also found in the specific ordered combination
of the limitations, similar to the Federal Circuit's findings in BASCOM
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Application 13/909,779
(BASCOM Global Internet v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir.
2016)). Reply Br. 5-7. Initially, we remind Appellants that BASCOM did
not find claims eligible on the substance, but rather that the Appellees did
not provide sufficient evidence to support a 12(b )( 6) motion to dismiss in
which facts are presumed in the non-movant's favor.
The key fact in BASCOM was the presence of a structural change
in "installation of a filtering tool at a specific location, remote from the
end-users, with customizable filtering features specific to each end user.
This design gives the filtering tool both the benefits of a filter on a local
computer and the benefits of a filter on the ISP server." BASCOM, 827 F.3d
at 1350. The instant claims have no analogous structural benefit.
Claims 1, 3, 6, and 8-12 rejected under 35 USC§ 103(a) as unpatentable
over Utterback, Morris, and Rhine-Pallas
We are persuaded by Appellants' argument that the art fails to use
current and target locations as service database filter criteria. We agree with
the Examiner that Utterback describes providing a transition, i.e., relocation
service that would necessarily take such current and target locations into
account. As Appellants contend, however, this does not imply that doing so
involves using those locations in a filter applied to a service database created
based on patient data. Rather, this relocation decision appears to be a
separate decision made beyond the particular service decisions and the result
included in the plan of action.
Claim 7 rejected under 35 USC§ 103(a) as unpatentable over Utterback,
Morris, Rhine-Pallas, and Ennett
Claim 7 is a dependent claim and, therefore, the arguments as to the
independent claims are equally persuasive here.
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Application 13/909,779
CONCLUSIONS OF LAW
The rejection of claims 1, 3, and 6-12 under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more is proper.
The rejection of claims 1, 3, 6, and 8-12 under 35 U.S.C. § 103(a) as
unpatentable over Utterback, Morris, and Rhine-Pallas is improper.
The rejection of claim 7 under 35 U.S.C. § 103(a) as unpatentable
over Utterback, Morris, Rhine-Pallas, and Ennett is improper.
DECISION
The rejection of claims 1, 3, and 6-12 is 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). See 37 C.F.R.
§ 1.136(a)(l)(iv) (2011).
AFFIRMED
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