Ex Parte TESANOVIC et al

Patent Trial and Appeal Board

Dec 4, 2018

13204742 (P.T.A.B. Dec. 4, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/204,742 08/08/2011 Aleksandra TESANOVIC
24737 7590 12/06/2018
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.
2010P00740US01 1632
EXAMINER
SOREY, ROBERT A
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
12/06/2018 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 ALEKSANDRA TESANOVIC and
HARALD REITER 1
Appeal2017-007452
Application 13/204,742
Technology Center 3600
Before JOHNNY A. KUMAR, LARRY J. HUME, and BETH Z. SHAW,
Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1, 2, 4--11, and 13-24, which are all claims pending in
the application. Appellants have canceled claims 3 and 12. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is KONINKLIJKE
PHILIPS ELECTRONICS, N.V. App. Br. 1.
Appeal2017-007452
Application 13/204,742
STATEMENT OF THE CASE2
The Invention
Appellants' disclosed embodiments and claimed invention "relate[] to
compilation of a guideline model into a rule set for use by healthcare
management systems". Spec. 1, 11. 3--4.
Exemplary Claims
Claim 1, reproduced below, is representative of the subject matter on
appeal (emphases added to contested prior-art limitations):
1. A healthcare management system comprising:
a guideline model database containing models of medical
guidelines;
a computer system comprising a processor and a display;
a user input device configured to input user created
annotations into the computer system; and
a non-transitory computer-readable storage medium
containing instructions for execution by the processor, wherein
the instructions cause the processor to perform the steps of:
creating a guideline model from received
medical guidelines and storing the created model
in the guideline model database;
displaying the guideline model on the
display, wherein the guideline model is displayed
as a diagram;
receiving a set of annotations of the diagram
from the user input device;
2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed
Dec. 22, 2015); Reply Brief ("Reply Br.," filed Apr. 10, 2017); Examiner's
Answer ("Ans.," mailed Feb. 23, 2017); Final Office Action ("Final Act.,"
mailed July 29, 2015); and the original Specification ("Spec.," filed
Aug. 8, 2011) (claiming benefit of US 61/382,107, filed Sept. 13, 2010).
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compiling the guideline model into a rule set
using the annotations; and
writing the rule set into a rule database.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Condurso et al. ("Condurso")
Ward
US 2006/0047538 Al Mar. 2, 2006
US 2006/0167735 Al July 27, 2006
Hagerty et al. ("Hagerty") US 7,373,597 B2 May 13, 2008
deLusignan et al. ("deLusignan") US 2009/0192826 Al July 30, 2009
Rejections on Appeal
RI. Claims 1, 2, 4--11, and 13-24 stand rejected under 35 U.S.C.
§ 101 as being directed to patent-ineligible subject matter. Final Act. 2.
R2. Claims 1, 2, 8, 9, 11, 13, 14, 18-20, and 23 3 stand rejected
under pre-AIA 35 U.S.C. § I02(b) as being anticipated by Hagerty. Final
Act. 3.
R3. Claims 4--7, 15-17, and 21 stand rejected under 35 U.S.C.
§ I03(a) as being unpatentable over the combination of Hagerty and Ward.
Final Act. 9. 4
3 We note the explicit statement of Rejection R2 omits mention of
independent claim 18. Final Act. 3. However, the Examiner addresses
claim 18 in the detailed rejection (Final Act. 7), and we find Appellants'
argument that claim 18 does not stand rejected on art unpersuasive. App.
Br. 21.
4 We further note there appears to be a typographical error in the Claims
Appendix (App. Br. 30) regarding claim 6, which recites "[t]he healthcare
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R4. Claim 10 stands rejected under 35 U.S.C. § I03(a) as being
unpatentable over the combination of Hagerty and deLusignan. Final
Act. 15.
R5. Claim 22 stands rejected under 35 U.S.C. § I03(a) as being
unpatentable over the combination of Hagerty, deLusignan, and Condurso.
Id.
R6. Claim 24 stands rejected under 35 U.S.C. § I03(a) as being
unpatentable over the combination of Hagerty and Condurso. Final Act. 17.
CLAIM GROUPING
Based on Appellants' arguments (App. Br. 14--28) and our discretion
under 37 C.F.R. § 4I.37(c)(l)(iv), we decide the appeal of the various
rejections as follows:
(a) Patent-ineligible subject matter Rejection RI of
claims 1, 2, 4--11, and 13-24 on the basis of representative
claim 1;
(b) AnticipationRejectionR2 of claims 1, 8, 9, 11, 13,
14, 18, and 20 on the basis of representative claim 1;
( c) Anticipation Rejection R2 of claims 2, 14, 19, and
23 on the basis of representative claim 2;
( d) Obviousness Rejection R3 of claims 4, 16, and 21
on the basis of representative claim 4; and
( e) Obviousness Rejection R3 of claims 5 and 17 on
the basis of representative claim 5.
management system comprising" rather than "a healthcare management
system," thus leaving open the possibility that claim 6 is not independent.
We proceed in this Decision under the assumption that claim 6 is an
independent claim.
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(f) We decide separately argued Rejection R3 of
claims 6 and 7, Rejection R5 of claim 22, and Rejection R6 of
claim 24, below;
(g) Remaining claims 10 and 15 in Rejections R4 and
R3, not argued separately, stand or fall with respective
independent claims 1 and 13 from which they depend. 5
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. To the extent Appellants have not
advanced separate, substantive arguments for particular claims, or other
issues, such arguments are waived. 37 C.F.R. § 4I.37(c)(l)(iv).
We disagree with Appellants' arguments with respect to claims 1, 2,
4--11, and 13-24 and, unless otherwise noted, we incorporate by reference
herein and adopt as our own: ( 1) the findings and reasons set forth by the
Examiner in the action from which this appeal is taken, and (2) the reasons
and rebuttals set forth in the Examiner's Answer in response to Appellants'
arguments. We highlight and address specific findings and arguments
regarding claims 1, 2, 4, 5, 6, 7, 22, and 24 for emphasis as follows.
5 "Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately." 37 C.F.R. § 4I.37(c)(l)(iv).
In addition, when Appellants do not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
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1. § 101 Rejection RI of Claims 1, 2, 4--11, and 13-24
Issue 1
Appellants argue (App. Br. 23-28; Reply Br. 3-11) the Examiner's
rejection of claim 1 under 35 U.S.C. § 101 as being directed to patent-
ineligible subject matter is in error. These contentions present us with the
following issue:
Under our governing case law concerning 35 U.S.C. § 101, did the
Examiner err in concluding claim 1 is directed to a judicial exception, i.e., an
abstract idea, without significantly more, and thus is patent-ineligible under
§ 101?
Analysis
Alice Framework
Section 101 provides that anyone who "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. 35 U.S.C. § 101.
The Supreme Court has repeatedly emphasized that patent protection should
not extend to claims that monopolize "the basic tools of scientific and
technological work." Gottschalkv. Benson, 409 U.S. 63, 67 (1972); Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71 (2012);
Alice Corp. Pty. Ltd. v. CLS Bank Int'!, 134 S. Ct. 2347, 2354 (2014).
Accordingly, laws of nature, natural phenomena, and abstract ideas are not
patent-eligible subject matter. Alice Corp., 134 S. Ct. at 2354.
The Supreme Court's two-part Alice framework guides us in
distinguishing between patent claims that impermissibly claim the "building
blocks of human ingenuity" and those that "integrate the building blocks into
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something more." Alice Corp., 134 S. Ct. at 2354 (internal quotation marks,
citation, and bracketing omitted). First, we "determine whether the claims at
issue are directed to [a] patent-ineligible concept[]." Id. at 2355. If so, we
"examine the elements of the claim to determine whether it contains an
'inventive concept' sufficient to 'transform' the claimed abstract idea into a
patent-eligible application." Id. at 2357 (quoting Mayo, 566 U.S. at 72, 79).
Although the two steps of the Alice framework are related, the "Supreme
Court's formulation makes clear that the first-stage filter is a meaningful one,
sometimes ending the§ 101 inquiry." Elec. Power Grp., LLC v. Alstom
S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) (citation omitted). We note the
Supreme Court "has not established a definitive rule to determine what
constitutes an 'abstract idea"' for the purposes of step one. Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1334 (Fed. Cir. 2016) (citing Alice, 134 S.
Ct at 2357).
In Enfish, our reviewing court held claims directed to a self-referential
logical model for a computer database patent-eligible under step one of
Alice. Enfish, 822 F.3d at 1330. The disclosed technique enabled faster
searching and more effective storage of data than previous methods. Id.
at 1333. The court found the claims directed to "a specific improvement to
the way computers operate, embodied in the self-referential table" (id.
at 1336), and explained that the claims are "not simply directed to any form
of storing tabular data, but instead are specifically directed to a self-
referential table for a computer database" that functions differently than
conventional databases. Id. at 1337.
In McRO, the claims were not held to be abstract because they recited
a "specific ... improvement in computer animation" using "unconventional
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rules that relate[ d] sub-sequences of phonemes, timings, and morph weight
sets." McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1302-
03, 1307---08, 1314--15 (Fed. Cir. 2016). InMcRO, "the incorporation of the
claimed rules, not the use of the computer," improved an existing
technological process. Id. at 1314.
However, our reviewing court has held claims ineligible as directed to
an abstract idea when they merely collect electronic information, display
information, or embody mental processes that could be performed by
humans. Elec. Power Grp., 830 F.3d at 1353-54 (collecting cases). At the
same time, "all inventions at some level embody, use, reflect, rest upon, or
apply laws of nature, natural phenomena, or abstract ideas." Mayo, 566 U.S.
at 71. Abstract ideas may include, but are not limited to, fundamental
economic practices, methods of organizing human activities, an idea of
itself, and mathematical formulas or relationships. Alice 134 S. Ct. at 2355-
57. Under this guidance, we must therefore ensure at step one that we
articulate what the claims are directed to with enough specificity to ensure
the step one inquiry is meaningful. Id. at 2354 ("[W]e tread carefully in
construing this exclusionary principle lest it swallow all of patent
law.").( citation omitted)).
Under the "abstract idea" step we must evaluate "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 Tex., LLC v.
DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (internal citation
omitted). If the claims are not directed to a patent-ineligible concept, the
inquiry ends. See Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253,
1262 (Fed. Cir. 2017). If the concept is directed to a patent-ineligible
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concept, we proceed to the "inventive concept" step. For that second step
we must "look with more specificity at what the claim elements add, in order
to determine 'whether they identify an "inventive concept" in the application
of the ineligible subject matter' to which the claim is directed." Affinity
Labs, 838 F.3d at 1258 (quoting Elec. Power Grp., 830 F.3d at 1353).
Alice Step 1 -Abstract Idea
The Examiner concludes the claims are directed to a judicial
exception to patent eligibility, i.e., "creating a guideline model from received
medical guidelines, displaying the model as a diagram, annotating the
diagram, compiling the guideline model into a rule set using the
annotations." Final Act. 2. "This would preclude others from converting
medical guidelines to diagram form and annotating them." Id.
Appellants generally contends the section "101 rejection is based on
an improper interpretation of the claims." App. Br. 23. More specifically,
Appellants argue the Examiner erred in concluding the appealed claims
would "preclude others from converting medical guidelines to diagram form
and annotating them." Id. ( quoting Final Act. 2). Appellants continue their
argument by asserting "[c]laim 1 would only preclude others from
converting medical guidelines to a diagram form and annotating them if it
were performed with the hardware enumerated in claim 1 and with the five
processing steps delineated in claim 1." App. Br. 24.
Under the "abstract idea" step we must evaluate "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, 838 F.3d
at 1257 ( citation omitted).
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Turning to the claimed invention, claim 1 recites a "healthcare
management system." Claim 1 (preamble). System claim 1 limitations also
require elements performing functions including:
(a) "a guideline model database";
(b) "a processor and a display;"
(c) "a user input device; and"
( d) "a non-transitory computer-readable storage medium
containing instructions for execution by the processor [that]
cause the processor to perform the steps of:"
(i) "creating a guideline model ... and storing the
created model";
(ii) "displaying the guideline model on the display
d• II . . . as a iagram;
(iii) "receiving a set of annotations of the diagram
from the user input device;"
(iv) "compiling the guideline model into a rule set
using the annotations; and"
( v) "writing the rule set into a rule database."
Our reviewing courts have often identified abstract ideas by referring
to earlier precedent, e.g., by comparing a claimed concept to the concepts
previously identified as abstract ideas by the courts. Amdocs (Israel), Ltd. v.
Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016); Enfish, 822
F.3d. at 1334. For example, in Alice, the Supreme Court identified the
claimed systems and methods as describing the concept of intermediated
settlement, and then compared this concept to the risk hedging concept
identified as an abstract idea in Bilski. Because this comparison revealed
"no meaningful distinction between the concept of risk hedging in Bilski and
the concept of intermediated settlement at issue here", the Court concluded
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that the concept of intermediated settlement was an abstract idea. Alice, 134
S. Ct. at 2356-57. Similarly, the Federal Circuit in Amdocs compared the
claims at issue with "eligible and ineligible claims of a similar nature from
past cases" as part of its eligibility analysis. Amdocs, 841 F.3d at 1295-
1300.
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, NA., 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 1353-54 (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"). Similarly, "collecting, displaying, and
manipulating data" is an abstract idea. Intellectual Ventures I LLC v.
Capital One Fin. Corp., 850 F.3d 1332, 1340 (Fed. Cir. 2017). Also,
collecting and comparing known information has been determined to be an
abstract idea. Classen Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d
1057, 1067 (Fed. Cir. 2011) ("Claim 1 of the #283 patent states the idea of
collecting and comparing known information"). Further, a process that
employs mathematical algorithms to manipulate existing information to
generate additional information is abstract. Digitech Image Techs., LLC v.
Elec.for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014). Also, more
recently, our reviewing court has also concluded that acts of parsing,
comparing, storing, and editing data are abstract ideas. Berkheimer v. HP
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Inc., 881 F.3d 1360, 1367 (Fed. Cir. 2018). Finally, classifying and storing
digital images in an organized manner has been held to be an abstract idea.
In re TL! Communications LLC Patent Litigation, 823 F.3d 607 (Fed.
Cir. 2016).
Under step one, we agree with the Examiner that the inventions
claimed in each of independent claims 1, 6, 13, and 18 are directed to an
abstract idea, i.e., creating, displaying, and annotating a guideline model and
compiling the guideline model into a rule set using the annotations, which
we conclude is a method of organizing human activity, e.g., tracking and/or
organizing information or which, alternatively, may be considered "an idea
of itself', i.e., concepts related to data comparisons that can be performed
mentally and which are analogous to human mental work. See Ans. 10.
As the Specification discloses, "[t]he invention relates to compilation
of a guideline model into a rule set for use by healthcare management
systems." Spec. 1 ("TECHNICAL FIELD"). 6 We find this type of activity,
6 See also Spec. 28 ("Abstract"):
A healthcare management system comprising:
a guideline model database containing models of medical
guidelines;
a computer system comprising a processor and a display; and
a computer-readable non-transitory storage medium containing
instructions for execution by the processor, wherein the
instructions cause the processor to perform the steps of:
- reading a guideline model from the guideline model database,
- displaying the guideline model on the display, wherein the
guideline model is displayed as a diagram,
- receiving a set of annotations of the diagram,
- compiling the guideline model into a rule set using the
annotations,
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i.e., creating, displaying, and annotating a guideline model and compiling
the guideline model into a rule set using the annotations, for example,
includes longstanding conduct that existed well before the advent of
computers and the Internet, and could be carried out by a human with pen
and paper. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
13 7 5 (Fed. Cir. 2011) ("That purely mental processes can be unpatentable,
even when performed by a computer, was precisely the holding of the
Supreme Court in Gottschalk v. Benson."). 7
Our reviewing court has previously held other patent claims ineligible
for reciting similar abstract concepts. For example, although the Supreme
Court has enhanced the § 101 analysis since Cy her Source in cases like Mayo
and Alice, the Federal Circuit continues to "treat[] 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." Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1146-
47 (Fed. Cir. 2016) (alteration in original) (quoting Elec. Power Grp., 830
F.3d at 1354).
As mentioned above, Appellant also alleges claim 1 is patent-eligible
because its practice does not preempt practice by others. App. Br. 24; Reply
Br. 6. Even assuming claim 1 does not preempt all other techniques relating
to the claimed invention, we disagree with Appellants' argument. We
disagree because, "[ w ]hile preemption may signal patent ineligible subject
- writing the rule set into a rule database.
7 CyberSource further guides that "a method that can be performed by
human thought alone is merely an abstract idea and is not patent-eligible
under§ 101." CyberSource, 654 F.3d at 1373.
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matter, the absence of complete preemption does not demonstrate patent
eligibility .... Where a patent's claims are deemed only to disclose patent
ineligible subject matter under the Mayo framework, as they are in this case,
preemption concerns are fully addressed and made moot." Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015);
see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362---63
(Fed. Cir. 2015) ("that the claims do not preempt all price optimization or
may be limited to price optimization in the e-commerce setting do not make
them any less abstract").
In the Reply Brief, Appellants argue " [ e ]ven a cursory review of the
present claims shows that they are much more analogous to the patent-
eligible claims of Bascom, McRO, and Enfish than they are to the patent-
ineligible claims of Alice and Mayo." Reply Brief 8. We disagree with
Appellants' conclusions.
In Bascom, the claims were directed to the inventive concept of
providing customizable Internet-content filtering which, under Step 2 of the
Alice analysis, was found to transform the abstract idea of filtering content
into a patent-eligible invention. Although the underlying idea of filtering
Internet content was deemed to be abstract, under step 2 of the Alice
analysis, the claims carved out a specific location for the filtering system,
namely a remote Internet service provider (ISP) server, and required the
filtering system to give users the ability to customize filtering for their
individual network accounts. Bascom Global Internet Services, Inc. v.
AT&T Mobility LLC, 827 F.3d 1341, 1349 (Fed. Cir. 2016).
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However, the claims in Bascom were determined to be patent-eligible
for reasons different than in this Appeal. In this Appeal, the underlying
abstract idea is creating, displaying, and annotating a guideline model and
compiling the guideline model into a rule set using the annotations, which is
directed to the abstract idea of data comparisons that can be performed
mentally in the human mind and/or by pen and paper. We are not persuaded
by Appellants' assertion that "[t]he patent-eligible data processing apparatus
claims of Bascom ... are much more analogous to claim 1 than the medical
dose efficacy method of Mayo." Reply Br. 6.
We find no analogy between claim 1 and the claims of Bascom. As
discussed further in the Step 2 analysis below, we find the character of the
claims as a whole, is still directed to the abstract idea.
Appellants generally allege, without specificity, that the claims are
similar to those held patent-eligible in McRO. Reply Br. 7-8 ( quoting
claim 1 in McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299
(Fed. Cir. 2016)). We disagree with Appellants' allegation that the claims of
McRO are analogous to the claims on Appeal.
We disagree because the claims inMcRO recited a "specific ...
improvement in computer animation" using "unconventional rules that
relate[ d] sub-sequences of phonemes, timings, and morph weight sets."
McRO, 837 F.3d at 1302---03, 1307---08, 1314--15. InMcRO, "the
incorporation of the claimed rules, not the use of the computer," improved
an existing technological process. Id. at 1314. Appellants do not, however,
identify how claim 1 in this Appeal improves an existing technological
process. See Alice, 134 S. Ct. at 2358 (explaining that "the claims in Diehr
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were patent eligible because they improved an existing technological
process"). Rather, claim 1 concerns a "healthcare management system" that
creates, displays, and annotates a guideline model. App. Br. 29. In addition,
Appellants do not direct us to any evidence that the claimed "creating,"
"displaying," "receiving," "compiling," and "writing" steps performed by the
processor of claim 1 correspond to unconventional rules.
Finally, Appellants further argue the Examiner's section 101 analysis
"abstracts the independent claims and fails to consider the more specific
limitations of the dependent claims." Reply Br. 9. We agree with and
incorporate herein the Examiner's conclusion that "the additional limitations
of the [dependent] claims do not amount to significantly more than [the]
abstract idea." Final Act. 19; and see Ans. 14.
Therefore, in agreement with the Examiner, we conclude claim 1
involves nothing more than creating, displaying, and annotating a guideline
model and compiling the guideline model into a rule set using the
annotations, without any particular inventive technology- an abstract idea.
See Elec. Power Grp., 830 F.3d at 1354. 8
Accordingly, on this record, and under step one of Alice, we agree
with the Examiner's conclusion the claims are directed to an abstract idea.
Alice Step 2 -Inventive Concept
If the claims are directed to a patent-ineligible concept, as we
conclude above, we proceed to the "inventive concept" step. For that step
8 Merely automating previously manual processing by using computers does
not qualify as an eligibility-rejection-defeating improvement. Credit
Acceptance Corp. v. Westlake Servs., 859 F.3d 1044 (Fed. Cir. 2017).
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we must "look with more specificity at what the claim elements add, in order
to determine 'whether they identify an "inventive concept" in the application
of the ineligible subject matter' to which the claim is directed." Affinity
Labs, 838 F.3d at 1258 (quoting Elec. Power Grp., 830 F.3d at 1353).
Appellants allege:
Claim 1 sets forth a combination of five elements and six
computer operations. It is submitted that this intricate
combination again raises to much more than building blocks or
basic tools. Rather, it is submitted that claim 1 sets forth a
detailed combination of elements and computer processes
which amounts to significantly more than an abstract idea and
sets forth patent eligible subject matter.
App. Br. 26.
In applying step two of the Alice analysis, our reviewing court guides
we must "determine whether the claims do significantly more than simply
describe [the] abstract method" and thus transform the abstract idea into
patentable subject matter. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709,
715 (Fed. Cir. 2014). We look to see whether there are any "additional
features" in the claims that constitute an "inventive concept," thereby
rendering the claims eligible for patenting even if they are directed to an
abstract idea. Alice, 134 S. Ct. at 2357. Those "additional features" must be
more than "well-understood, routine, conventional activity." Mayo, 566
U.S. at 79.
Limitations referenced in Alice that are not enough to qualify as
"significantly more" when recited in a claim with an abstract idea include, as
non-limiting or non-exclusive examples: adding the words "apply it" ( or an
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equivalent) with an abstract idea;9 mere instructions to implement an
abstract idea on a computer; 10 or requiring no more than a generic computer
to perform generic computer functions that are well-understood, routine and
conventional activities previously known to the industry. 11
Evaluating representative claim 1 under step 2 of the Alice analysis,
we agree with the Examiner that it lacks an inventive concept that
transforms the abstract idea of creating, displaying, and annotating a
guideline model and compiling the guideline model into a rule set using the
annotations into a patent-eligible application of that abstract idea. See
Ans. 11-12. 12
The Examiner further concludes the additional claim elements are
recited at "a high level of generality and provide conventional functions that
do not add meaningful limits to practicing the abstract idea. Hence,
considering the additional elements claimed individually, or as an ordered
combination, the claim(s) as a whole do (does) not amount to significantly
more to the abstract idea." Ans. 12.
9 Alice, 134 S. Ct. at 2357-58.
10 Alice, 134 S. Ct. at 2357, simply implementing a mathematical principle
on a physical machine, namely a computer (citing Mayo, 566 U.S. at 84--85).
11 Alice, 134 S. Ct. at 2359, e.g., using a computer to obtain data, adjust
account balances, and issue automated instructions.
12 The Examiner concludes:
The claimed database, processor, display, and computer-
readable storage medium are generic components that are
configured to perform activities that are well-understood,
routine, and conventional activities previously known to the
industry. The originally filed specification was investigated and
found to support this interpretation.
Ans. 11 ( citing Spec. 3, 11. 19-21; 4, 11. 10-20; 5, 11. 6-9).
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We note the patent eligibility inquiry may contain underlying issues of
fact. Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314,
1325 (Fed. Cir. 2016). In particular, "[t]he question of whether a claim
element or combination of elements is well-understood, routine and
conventional to a skilled artisan in the relevant field is a question of fact."
Berkheimer, 881 F.3d at 1368.
As evidence of the conventional nature of the claimed network
components and processes, we note the Examiner's citation to Appellant's
Specification at page 3, lines 19-21; page 4, lines 10-20; and page 5,
lines 6-9.
We agree with the Examiner that the claim limitations may be broadly
but reasonably construed as reciting conventional computer components and
techniques, particularly in light of Appellant's Specification, as cited
above. 13
With respect to the Step 2 analysis, we agree with the Examiner
because, as in Alice, the recitation of a "healthcare management system"
using a "database," a "user input device," a "storage medium," and a
"computer system comprising a processor and a display" that carry out
13 During prosecution, claims must be given their broadest reasonable
interpretation when reading claim language in light of the specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard,
we interpret claim terms using "the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant's specification." In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997).
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various functions ( claim 1) is simply not enough to transform the patent-
ineligible abstract idea here into a patent-eligible invention. See Alice, 134
S. Ct. at 2357 ("[C]laims, which merely require generic computer
implementation, fail to transform [an] abstract idea into a patent-eligible
invention."). 14
Accordingly, based upon the findings above, on this record, we are
not persuaded of error in the Examiner's conclusion that the appealed claims
are directed to patent-ineligible subject matter. Therefore, we sustain the
Examiner's § 101 rejection of independent claim 1, and grouped claims 2, 4--
11, and 13-24, not argued separately, and which fall therewith. See Claim
Grouping, supra.
2. § 102(b) Rejection R2 of Claims 1, 2, 8, 9, 11, 13, 14, 18-20, and 23
Issue 2
Appellants argue (App. Br. 14--15; Reply Br. 2) the Examiner's
rejection of claim 1 under 35 U.S.C. § 102(b) as being anticipated by
Hagerty is in error. These contentions present us with the following issue:
Did the Examiner err in finding the cited prior art discloses " [a]
healthcare management system" that includes, inter alia, "a guideline model
database containing models of medical guidelines," and a computer-readable
storage medium containing instructions that "cause the processor to perform
the steps of ... receiving a set of annotations of the diagram from the user
input device; [ and] compiling the guideline model into a rule set using the
annotations," as recited in claim 1?
14 Appellant merely alleges, "claim 1 sets forth a detailed combination of
elements and computer processes which amounts to significantly more than
an abstract idea and sets forth patent eligible subject matter. App. Br. 26.
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Analysis
Appellants contend, "Hagerty discloses linkage to a patient database
that can save a clinician time when entering data required to apply a
guideline .... A patient database is not a guideline model database.
Hagerty does not disclose a guideline model database." App. Br. 4 ( citing
Hagerty col. 5, 11. 31-32). Appellants further argue, Hagerty "evaluate[s] the
annotated guidelines and generate[ s] recommendations rather than compiling
the guideline model into a rule set using a set of annotations as called for in
claim 1." Id. ( citing Hagerty col. 6, 11. 54--65).
Guideline Model Database
In response to Appellants' contention, the Examiner finds:
[ Appellants'] argument is directed to the claimed
"guideline model database containing models of medical
guidelines" where the database is a generic database (e.g.,
originally filed specification page 4, lines 17-20, where "A
'database' as used herein encompasses a data file or repository
which contains data that may be accessed by a processor.
Examples of databases are, but are not limited to: a data file, a
relational database, a file system folder containing data files,
and a spreadsheet file[]"; and page 15, lines 15-16, where "The
computer storage 406 contains a guideline model database 410
which contains a guideline model 412. ")
Ans. 4.
Under the broadest reasonable interpretation of the claims in light of
the Specification, 15 we agree with the Examiner's finding that Hagerty
15 See n.13, supra.
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discloses the recited "guideline model database containing models of
medical guidelines." 16 Final Act. 4.
Receiving a Set of Annotations
Appellants also assert "[c]laim 1 further calls for receiving a second
set of annotations of the diagram. Hagerty discloses an annotated text file
which comprises original text and HGML tags .... The annotated text file is
not an annotated diagram. Hagerty does not disclose annotations of a
diagram." App. Br. 14 (citing Hagerty col. 2, 1. 65---col. 3, 1. 2).
In response to Appellants' second contention, the Examiner finds:
Hagerty meets the broad limitations in question. Hagerty
teaches a text file of clinical guidelines in text documents (see:
Hagerty, column 1, lines 59---60), where the text guidelines have
been tagged in [Hypertext Guideline Markup Language]
HGML thereby indicating and associating conditional logic
relationships. The results are saved in a storage device. (See:
Hagerty, column 2, line 65, through column 3, line 3). Hence,
Hagerty teaches a set of guidelines that constitute a model
wherein the guidelines within the model may be annotated to
indicate conditional logical relationships[.]
Ans. 5.
Under the broadest reasonable interpretation of the claimed "receiving
a set of annotations of the diagram from the user input device," we agree
16 Appellants state: "A 'database' as used herein encompasses a data file or
repository which contains data that may be accessed by a processor.
Examples of databases are, but are not limited to: a data file, a relational
database, a file system folder containing data files, and a spreadsheet file."
Spec. 4, 11. 17-20. Thus, while Hagerty discloses a patient database, we find
the reference also discloses a data file or repository as cited by the Examiner
(see Final Act. 3 (citing Hagerty col. 2, 1. 65 - col. 3, 1. 3) which Appellants'
Specification also defines as a database.
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with the Examiner that Hagerty's tagging of text guidelines using HGML
discloses annotations of a diagram. We agree with the Examiner because, as
Hagerty discloses, "[t]he point-and-click interface provided here for
annotating the guideline in HGML helps in identifying key components and
verifying the accuracy and efficacy of the machine-operable guideline."
Hagerty col. 8, 11. 33-36.
Compiling the Guideline Model into a Rule Set
Appellants also allege:
Claim 1 calls for compiling the guideline model into a
rule set using the annotations. By distinction, Hagerty discloses
creating an annotated text file which includes the original text
HGML file (column 2, line 65 - column 3, line 2). Hagerty
discloses parsing the HGML file with a validation engine 140
which, as set forth in column 6, lines 54-57, produces
recommendations. Parsing the file does not create a rule set.
Hagerty discloses a rule-based processor which employs
heuristic decision making and/or operator invention to annotate
or tag the original text file with symbols and vocabulary of a
hypertext markup language. Such a rule-based processor is not
a rule set compiled from a guideline model using annotations.
App. Br. 15.
We agree with the Examiner's finding that Hagerty discloses "writing
the rule set into a rule database," as recited in claim 1. See Final Act. 4;
Ans. 5-6. We agree with the Examiner because, as cited by the Examiner
(Final Act. 4), Hagerty discloses:
Should changes or adjustments in the markup be
necessary, stage 235 is provided to make and save such changes
prior to review. At the end of a cycle of markup and view,
hypertext document 240 results. Hypertext document 240, the
resulting output of the markup/view/edit steps 220, 230, 235,
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contains all necessary links and conditions to rapidly apply the
guideline. It can thus be applied (stage 230) directly by the
practitioner or technician to the problem or diagnosis task at
hand.
Hagerty, col. 7, 11. 51-59.
We find, under the broadest reasonable interpretation of the recited
"writing the rule set into a rule database," Hagerty's saving of changes or
adjustments in the markup in a document for subsequent, rapid application
of the guideline discloses the disputed limitation.
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the cited prior art to
disclose the disputed limitations of claim 1, nor do we find error in the
Examiner's resulting finding of anticipation. Therefore, we sustain the
Examiner's anticipation rejection of independent claim 1, and grouped
claims 8, 9, 11, 13, 14, 18, and 20 which fall therewith. See Claim
Grouping, supra.
3. § 102(b) Rejection R2 of Claims 2, 14, 19, and 23
Issue 3
Appellants argue (App. Br. 15; Reply Br. 2) the Examiner's rejection
of claim 2 under 35 U.S.C. § 102(b) as being anticipated by Hagerty is in
error. These contentions present us with the following issue:
Did the Examiner err in finding the cited prior art discloses "[t]he
healthcare management system of claim l" wherein, inter alia, the processor
performs the step of "modifying the guideline model in accordance with the
set of modifications before compiling the guideline model into a rule set," as
recited in claim 2?
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Analysis
Appellants allege "the user input modifications described in column 7
of Hagerty clearly do not show compiling the guideline model into a rule
set." App.Br.15
The Examiner cites Hagerty column 7, lines 51-59 as disclosing the
disputed limitation of claim 2. Final Act. 5. We agree with the Examiner
for the reasons discussed above in Issue 2, including the quotation of
Hagerty above with respect to the limitation in claim 1 of "compiling the
guideline model into a rule set using the annotations." See "Compiling the
Guideline Model Into a Rule Set" section, above.
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the cited prior art to
disclose the disputed limitations of claim 2, nor do we find error in the
Examiner's resulting finding of anticipation. Therefore, we sustain the
Examiner's anticipation rejection of independent claim 2, and grouped
claims 14, 19, and 23 which fall therewith. See Claim Grouping, supra.
4. § I03(a) Rejection R3 of Claims 4--7, 16, and 21
Issue 4
Appellants argue (App. Br. 15; Reply Br. 2) the Examiner's rejection
of claim 4 under 35 U.S.C. § 103(a) as being obvious over the combination
of Hagerty and Ward is in error. These contentions present us with the
following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests "[t]he healthcare management system of claim 2" wherein, inter
alia, the processor performs the steps of "reading the rule set from the rule
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database," and "compiling a patient pathway using the rule set and the
personalization selection," as recited in claim 4?
Analysis
Appellants argue Hagerty does not teach or suggest "reading a rule
set, much less a rule database." App. Br. 16. "[T]he Examiner ... has
intermixed the rule database of claim 4 and the guideline model database
recited in claim 1 as referring to a common element in Hagerty rather than
the two distinct elements as set forth in claims 1 and 4." Id. We disagree
with Appellants' contention that the Examiner "intermixed" the rule database
and the guideline model database. 17
In the Final Action, the Examiner cites Hagerty at column 7, lines 60-
67 and column 8, lines 4--16 as teaching or suggesting the "reading a rule
set" limitation of claim 4, Final Act. 9.
Application stage 230 consists of comparing measured or
observed characteristics of the problem to be solved ( e.g., the
symptoms and vital signs of a patient to be treated or the facts
of a particular fault or error situation) to the predicates of the
logical tests presented in the hypertext guideline. One
exemplary embodiment of the present invention provides a
hand-held computer with the hypertext guideline (HG)
17 Appellants make a notional argument that the reference combination does
not teach or suggest the claim 4 limitations "displaying personalization
questions on the display, wherein the personalization questions are generated
using personalization options; receiving a personalization selection from the
user input device." App. Br. 14. However, Appellants' argument is not
persuasive because they admit this personalization is present in the reference
combination, i.e., "the markup 220 described in column 7 of Hagerty does
describe personalizing the guidelines to the patient. That is, the
personalization has already taken place in the marking up or annotating step
of Hagerty, leaving no need for the personalizations of Ward." App, Br, 16.
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embedded therein to a clinician. The clinician, upon examining
the patient, can then refer to the HG and follow the logical path
indicated by the patient's particular condition toward a
recommended treatment.
Hagerty ( col. 7, 1. 60 - col. 8, 1. 3).
Concerning the related claim 1 limitation "writing the rule set into a
rule database," the Examiner cites Hagerty at column 7, lines 51-59 and
Figure 2 as disclosing the claimed "rule database" and writing operation.
Final Act, 4. However, contrary to Appellants' contentions the Examiner
"intermixed" the claim elements, in connection with claim 1, from which
claim 4 depends, the Examiner cites Hagerty at column 2, line 65 through
column 3, line 3 as disclosing the recited "guideline model database
containing models of medical guidelines." Final Act. 3. 18
Based upon the findings above, on this record, we are not persuaded
of error in the Examiner's reliance on the cited prior art combination to teach
or suggest the disputed limitations of claim 4, nor do we find error in the
Examiner's resulting conclusion of obviousness. Therefore, we sustain the
Examiner's obviousness rejection of dependent claim 4, and grouped claims
16 and 19 which fall therewith. See Claim Grouping, supra.
Appellants present additional arguments contending that each of
dependent claims 5-7 in Rejection R3 are also patentable over the
combination of Hagerty and Ward. App. Br. 16-18. We disagree with
Appellants' contentions, and adopt and incorporate the Examiner's findings
concerning these claims herein by reference. See Final Act. 10-12.
18 We are mindful of Appellants' broad definition of "database," which
includes, inter alia, a data file. See Spec. 4, 11. 17-20.
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5. Rejections R3 and R4 of Claims 10 and 15
In view of the lack of any substantive or separate arguments directed
to obviousness Rejections R3 and R4 of claims 10 and 15 under§ 103 (see
generally App. Br. 14 et seq.), we sustain the Examiner's rejection of these
claims. Arguments not made are waived.
6. Rejections R5 and R6 of Claims 22 and 24
Appellants present additional arguments contending that each of
dependent claims 22 and 24 in Rejections R5 and R6 are also patentable
over various combinations of Hagerty, DeLusignan, and Condurso. App.
Br. 18 and 20-21. We disagree with Appellants' contentions, and adopt and
incorporate the Examiner's findings concerning these claims herein by
reference. See Final Act. 15-18.
REPLY BRIEF
To the extent Appellants may advance new arguments in the Reply
Brief (Reply Br. 2-11) not in response to a shift in the Examiner's position
in the Answer, we note arguments raised in a Reply Brief that were not
raised in the Appeal Brief or are not responsive to arguments raised in the
Examiner's Answer will not be considered except for good cause (see 37
C.F.R. § 41.4I(b)(2)), which Appellants have not shown.
CONCLUSIONS
(1) The Examiner did not err with respect to patent-ineligible
subject matter Rejection RI of claims 1, 2, 4--11, and 13-24 under 35 U.S.C.
§ 101, and we sustain the rejection.
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(2) The Examiner did not err with respect to anticipation Rejection
R2 of claims 1, 2, 8, 9, 11, 13, 14, 18-20, and 23 under 35 U.S.C. § 102(b),
and we sustain the rejection.
(3) The Examiner did not err with respect to obviousness
Rejections R3 through R6 of claims 4--7, 15-17, 21, 22, and 24 under 3 5
U.S.C. § 103(a) over the cited prior art combinations of record, and we
sustain the rejections.
DECISION
We affirm the Examiner's decision rejecting claims 1, 2, 4--11,
and 13-24.
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(±).
AFFIRMED
29