Ex Parte Van Zon et al

Patent Trial and Appeal Board

Jun 26, 2018

13511205 (P.T.A.B. Jun. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/511,205 05/22/2012 Kees VanZon
24737 7590 06/28/2018
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.
2009P01420WOUS 1463
EXAMINER
HATCHER, DEIRDRE D
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
06/28/2018 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 KEES VAN ZON and WILLIAM P. LORD
Appeal2016-002870
Application 13/511,205 1
Technology Center 3600
Before JOSEPH A. FISCHETTI, MICHAEL R. ZECHER, and
TARA L. HUTCHINGS, Administrative Patent Judges.
FISCHETTI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner's
final rejection of claims 1-23. We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
1 Appellants identify Koninklijke Philips N.V. as the real party in interest.
Appeal Br. 2.
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Application 13/511,205
THE INVENTION
Appellants' claims are directed to "[a] system and method for loading
and displaying a guideline graph based on a first user input, receiving a
second user input selecting a desired portion of the guideline graph and
processing the second user input to load and display a sub-graph including
the desired portion of the guideline graph." Abstract; Spec. i-f 4 (stating
essentially the same).
Claim 1 reproduced below, is representative of the subject matter on
appeal.
1. A method, comprising:
loading, by a processor, and displaying, by a display
device, a guideline graph based on a first user input;
receiving, by a processor, a second user input selecting a
disease;
receiving, by the processor, a third user input selecting a
desired portion of the guideline graph; and
processing, by the processor, the third user input to load
and display, by the display device, a sub-graph including the
desired portion of the guideline graph, the sub-graph including
a portion of the guideline graph that includes tasks for a specific
user type, wherein the tasks are based on the second user input
selecting a disease.
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Setteducati
Hussain
Gress et al.
US 2004/0039623 Al
US 2006/0282302 Al
US 2007 /0061176 Al
2
Feb.26,2004
Dec. 14, 2006
Mar. 15, 2007
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Application 13/511,205
(hereinafter "Gress")
Ober et al. US 2007/0185739 Al Aug. 9, 2007
(hereinafter ("Ober")
Weidenhaupt et al. US 2008/0235057 Al Sept. 25, 2008
(hereinafter
"W eidenhaupt")
Beller et al. US 2008/0255880 Al Oct. 16, 2008
(hereinafter "Beller")
The following rejections are before us for review.
Claims 1-23 are rejected under 35 U.S.C. § 101.
Claims 1, 2, 4, 6, 7, 12, 13, 15, 17, 18, and 23 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Gress in view of Ober.
Claims 3, 5, 14, and 16 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gress, Ober, and in further view of Hussain.
Claims 8, 10, 19, and 21 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Gress, Ober, and in further view of W eidenhaupt.
Claims 9 and 20 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gress, Ober, W eidenhaupt, and in further view of Beller.
Claims 11 and 22 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gress, Ober, and in further view of Setteducati.
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ANALYSIS
35 U.S.C. § 103(a) REJECTION
Each of independent claims 1, 12, and 23 recites, in one form or
another, "the third user input to load and display, a sub-graph including the
desired portion of the guideline graph, the sub-graph including a portion of
the guideline graph that includes tasks for a specific user type."
The Examiner found concerning this limitation,
Although Gress teaches displaying role-centered representation
of a workflow model, Gress does not explicitly disclose the
sub-graph including a portion of the guideline graph that
includes tasks for a specific user type. However, Ober teaches
a system to identify healthcare guidelines (see Abstract). Ober
[paragraphs] 75, 76 teaches modifying the user interface based
on changing conditions and anticipated usage patterns. For
example[,] the system will present a particular user with a
clinical care protocol interface specific to a particular user's
log-in. The examiner considers this to be an example of a
graph that includes tasks for a specific user type. It would have
been obvious to a person having ordinary skill in the art at the
time of the Applicant's invention to modify the teachings of
Gress to include a guideline graph that includes tasks for a
specific user type as taught by Ober to improve adoption and
disciplined use of the system by making the interface easy to
use (see Ober para. 7 5)
(Final Act. 4--5). 2
Appellants argue,
2 All references to the Final Action ("Final Act.") refer to the Final Action
that was entered on January 2, 2015.
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The Appellants respectfully submit that Ober does not
disclose or suggest the displayed "sub-graph including a
portion of the guideline graph that includes tasks for a specific
user type, wherein the tasks are based on the second user input
selecting a disease," as recited in claim 1. . .. The CCP
[Clinical Care Protocol] protocol is a condition-specific set of
steps in a clinical process of care, and the CCP is based on a
knowledge base, where the knowledge base includes clinical
guidelines. (See id., i-fi-136, 47). In Ober, a clinical guideline is
a generally accepted clinical care standard based on medical
and expert evidence, which states procedures for treating
patients. (See id., i134). The "doctor guideline" of Ober is
applied as a template for creating a clinical protocol for a
specific patient. (See Ober, i-fi-1 44, 46) ....
In Ober, there is no indication that the doctor guideline, which
is a template, will subsequently display tasks for a specific type
of doctor in a "sub-graph." (See Ober, i-fi-1 44, 46, 75-76). Ober
does not [sic] that the doctor guideline itself includes the sub-
graph display of tasks for a particular set of doctors, where the
tasks are based on the disease selection input of a particular
user type. (See id., passim). In particular, the Examiner cites
the Ober patient record [and] reasons a patient is admitted to a
medical facility (which the Appellants do not concede are user
input selecting a disease) as the "second user input selecting a
disease" in claim 1. (See 112115 Office Action, p.4). However,
since the doctor guideline of Ober is only a template, and
therefore the basis for creating a clinical protocol for a patient,
the doctor guideline template itself is not based on the direct
disease selection of a specific doctor. (See Ober, i-fi-1 44, 46, 66).
(Appeal Br. 16-17).
We agree with Appellants. Our review of paragraph 7 5 in Ober
reveals that here an "encounter engine, [is disclosed whereby] the system
dynamically modifies the user interface based on changing conditions and
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anticipated usage patterns." Ober at paragraph 76 discloses a log-in step
required by a doctor, but once logged in the result is, "[a]utomatically, the
tablet identifies and validates the doctor and retrieves the doctor's list of
patients on this particular floor, in [the] particular wing-because the system
knows where it is and where the doctor and patients are." Thus, the log-in
step in Ober serves as a geo---locater to locate patients on a given floor, and
not to present a list of tasks to the doctor. At best, paragraph 7 6 discloses
the "system automatically retrieves the record for Patient A" when "the
Doctor walks into room 1027 with 2 patients-A & B." But, this feature
merely identifies which of two people's records is retrieved. The ordinary
and customary meaning of "task" is "a usually assigned piece of work often
to be finished within a certain time."3 We fail to see the equivalence
between a record for patient that is historical in nature, and an assigned piece
of work that is prospective in nature.
In the Answer, the Examiner alternatively cites to Gress to meet "the
sub-graph including a portion of the guideline graph that includes tasks for
a specific user type" limitation. See Answer 26-27. In so doing, the
Examiner now relies on various paragraphs and figures of Gress stating:
Gress para. 30 discloses in FIGS. 3-7 an exemplary visual
representation of the modeled exemplary workflow. FIG. 3
depicts the overall workflow 202 as well as identifies the
involved roles 212, activities 214 and artifacts 216. In the
visual representation of the workflow, one or more of the
depicted graphical elements 202-216 may be hyperlinked to
3 https://www.men-iam-webster.com/dictionarv/task (last visited 6/5/18).
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subsequent visual representations, such as those depicted in
FIGS. 4-7, or portions thereof, allowing a user to easily
navigate through the workflow for the purposes described
herein. The examiner considers the subsequent visual
representation to be examples of the sub-graphs of the instant
claims. Further, Gress para. 31 discloses FIG. 4 depicts the
patient intake sub-workflow 204 (or sub-graph) of the
workflow 202 of FIG. 3. As such, Gress teaches a guideline
graph (item 206 in Fig. 5) and then a sub-workflow (also
depicted in Fig. 5). Further, Gress para. 18 teaches each
activity has a responsible role, i.e. is performed by one actor
(the acting or responsible role), and both input and output
artifacts. Further, para. 22 teaches utilizing visual basic
macros, consistency checks may be performed and further
representations of the model may be generated, e.g. role-
centered or artifact centered views. Further, para. 24 teaches
the individual "views" furthermore offer different viewing
angles on the simulated reality, for instance from the viewpoint
of the procedures ( workflows ), from the viewpoint of a role (by
way of the so-called role table), or from the viewpoint of the
artifacts (with the aid of which interfaces, for instance, between
various disciplines are modeled).
(Answer 26-27).
Appellants in tum argue,
claim 1 makes it clear that the sub-graph displays the tasks of
the specific user type, as opposed to the guideline graph which
displays task for all of the user types. It is overly broad to
interpret the sub-graph as including tasks for all user types, as
suggested by the Examiner, as this interpretation would render
the sub-graph no different from the guideline graph. Since the
sub-graph is a selected desired portion of the guideline graph,
as recited in claim 1, interpretation the two graphs as the same
thing would be an unreasonable interpretation. Thus, a person
of ordinary skill in the art would not interpret the sub-graph as
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including task for all user types. Therefore, Examiner's
arguments regarding the "subsequent visual representation" or
"sub-graphs" of Gress (See 10/18/15 Examiner's Answer, pp.
26-27) are insufficient to disclose or suggest the "sub-graph" of
claim 1 since they include tasks for all user types.
(Reply Br. 7).
We agree with Appellants. Apart from being a new finding presented
by the Examiner for the first time in the Answer, our review of Gress at the
sections identified above shows that each of the cited examples (e.g., the
subsequent depicted graphical elements 202-216, the patient intake sub-
workflow 204 (or sub-graph) of the workflow 202, the guideline graph (item
206 in Fig. 5) and the sub-workflow) all merely disclose linked items
without distinction. The Examiner has mapped the claimed user-specific
tasks to the subsequent depicted graphical elements in Gress. (Answer 26-
27). But, the independent claims require that the second user input select a
disease, wherein the tasks are based on the second user input selecting that
disease. Gress only states that "one or more of the depicted graphical
elements 202-216 may be hyperlinked to subsequent visual representations"
(Gress, ,-r 30), but Gress does not disclose any nexus between the user and
the hyperlink, such as a disease selection, to cause the tasks to be user
specific. We are unable to discern, nor does the Examiner explain, how one
of ordinary skill in the art looking to Gress would have known to cause the
various sub-graphs to be designated ''for a specific user type."
Accordingly, we will not sustain the Examiner's obviousness rejection
of independent claims 1, 12, and 23. Since claims 2-11 and 13-22 depend
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from one of claims 1 and 12, and since we cannot sustain the Examiner's
obviousness rejection of claims 1 and 12, the rejection of the dependent
claims likewise cannot be sustained. The additional references relied on by
the Examiner in rejecting claims 3, 5, 8-11, 14, 16, and 19-22 under 35
U.S.C. § 103(a) do not remedy the deficiencies noted above concerning the
independent claims.
35 U.S.C. § 101 REJECTION
We will sustain the rejection of claims 1-23 under 35 U.S.C. § 101.
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, 134 S. Ct. 2347, 2355 (2014) (citing
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72-73
(2012)).
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To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept.
Although the Court in Alice made a direct finding as to what the
claims were directed to, we find that the claims themselves and the
Specification provide enough information to inform one as to what they are
directed to.
The steps in representative claim 1 result in: "loading ... a first user
input"; "receiving ... a second user input"; "receiving ... a third user
input"; and "processing, ... the third user input to load and display ... a sub-
graph including the desired portion of the guideline graph, the sub-graph
including a portion of the guideline graph that includes tasks for a specific
user type, wherein the tasks are based on the second user input selecting a
disease."
The Specification states,
Evidence suggests that many medical errors and inefficiencies
in healthcare can be avoided by standardizing clinical care
through guidelines and protocols. Thus, clinical guidelines
documenting a set of evidence-based recommendations for
healthcare professionals on how to optimally diagnose, treat
and manage patients have been developed by various medical
professional organizations. Typically the recommendations by
these organizations are not intended to be rigid rules, but rather
are meant to be pieces of evidence to guide their users.
Para. 1. Examiner finds that the abstract idea underlying the independent
claims is "processing user inputs to display a guideline graph." Final Act.
2-3; Ans. 12 ("processing and displaying a guideline graph"). Stated
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differently, this claim is directed to determining tasks for a specific user type
based on a selected disease in a guideline graph. Thus, all this evidence
shows that claim 1 is directed to determining tasks for a specific user type
based on a selected disease in a guideline graph. It follows from prior
Supreme Court cases, and Gottschalk v. Benson, 409 U.S. 63 (1972) in
particular, that the claims at issue here are directed to an abstract idea.
Determining tasks for a specific user type based on a selected disease in a
guideline graph represents a method of organizing human behavior because
it causes medical professionals (e.g., doctors, nurse practitioners, nurses,
etc.) to behave in a given manner according to prescribed guidelines. The
patent-ineligible end of the 35 U.S.C. § 101 spectrum includes methods of
organizing human behavior. See Alice Corp., 134 S. Ct. at 2355-2356.
Also, we find the steps of; selecting a disease, selecting a desired portion of
the guideline graph, and basing tasks on the selected disease, constitute
"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." Electric Power Grp., LLC v. Alstom S.A.,
830 F.3d 1350, 1354 (Fed. Cir. 2016); see also buySAFE, Inc. v. Google,
Inc., 765 F.3d 1350 (Fed. Cir. 2014) (claims directed to certain arrangements
involving contractual relations are directed to abstract ideas). Thus,
determining tasks for a specific user type based on a selected disease in a
guideline graph is an "abstract idea" beyond the scope of§ 101.
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As in Alice, we need not labor to delimit the precise contours of the
"abstract ideas" category in this case. It is enough to recognize that there is
no meaningful distinction in the level of abstraction between the concept of
an intermediated settlement in Alice, and the concept of determining tasks
for a specific user type based on a selected disease in a guideline graph, at
issue here. Both are squarely within the realm of "abstract ideas" as the
Court has used that term. That the claims do not preempt all forms of the
abstraction or may be limited to medical guidelines, does not make them any
less abstract. See OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359,
1360----61 (Fed. Cir. 2015).
The introduction of a computer (i.e., "a processor" and "a display
device") into the claims does not alter the analysis at Alice step two.
the 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 "implement[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
feature[ e ]" that provides any "practical assurance that the
process is more than a drafting effort designed to monopolize
the [abstract idea] itself."
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Alice Corp., 134 S. Ct. at 2358 (alterations in original) (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 Corp., 134 S. Ct. at 2359. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to retrieve, select, and apply decision criteria to data, modify the
data and display results amounts to electronic data query and retrieval---one
of the most basic functions of a computer. All of these computer functions
are well-understood, routine, conventional activities previously known to the
industry. See Elec. Power Grp., 830 F.3d at 1354; see also In re Katz
Interactive Call Processing Patent Litigation, 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"). 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 America, Inc. v. Investpic LLC, 890 F.3d 1016,
1022 (Fed. Cir. 2018).
When considering the claim elements as an ordered combination, the
computer components (i.e., "a processor" and "a display device") add
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nothing that is not already present when the steps are considered separately.
The sequence of data reception-analysis-access/presentation is equally
generic and conventional or otherwise held to be abstract. See Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (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.
Viewed as a whole, Appellants' claims simply recite the concept of
determining tasks for a specific user type based on a selected disease in a
guideline graph. The claims do not, for example, purport to improve the
functioning of the computer itself. Nor do they effect an improvement in
any other technology or technical field. Instead, the claims at issue amount
to nothing significantly more than instructions to determine tasks for a
specific user type based on a selected disease in a guideline graph. Under
controlling precedents, that is not enough to transform an abstract idea into a
patent-eligible invention. See Alice Corp., 134 S. Ct. at 2360.
The method claims do not, for example, purport to improve the
functioning of the computer itself. Nor, do they effect an improvement in
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any other technology or technical field. The Specification spells out
different generic equipment and parameters that might be applied using this
concept (see Specification i-f 11 ), and the particular steps such conventional
processing would entail based on the concept of information access under
different scenarios. They do not describe any particular improvement in the
manner a computer functions, at least with respect to the claims in the
instant application. Instead, the claims at issue amount to nothing
significantly more than an instruction to apply the abstract idea of
information access using some unspecified, generic computer. Under
controlling precedents, that is not enough to transform an abstract idea into a
patent-eligible invention. See Alice Corp., 134 S. Ct. at 2360.
As to the structural claims, they
are 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 Corp., 134 S. Ct._at 2360 (alterations in original).
We have reviewed all the arguments (Appeal Br. 3-11; Reply Br. 2-4)
Appellants have submitted concerning the patent eligibility of the claims
before us which stand rejected under 35 U.S.C. § 101. We find that our
analysis above substantially covers the substance of all the arguments which
have been made. But, for purposes of completeness, we will address various
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arguments in order to make individual rebuttals of same.
Appellants argue,
The claim addresses issues of reducing medical error and
increasing clinical guideline efficiency by managing and
loading clinical guidelines, specific to medical clinical
guideline managers. This claimed subject matter differs from
claims the courts found to recite abstract ideas, because claim 1
does not merely recite the performance of a known practice of
"organizing human activity."
(Appeal Br. 5).
We disagree with Appellants. The question is whether the claims, as a
whole, "focus on a specific means or method that improves the relevant
technology," or are otherwise "directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery." McRO,
837 F.3d at 1314. In this case, claim 1, as a whole, is focused on satisfying
certain contingencies for "tasks for a specific user type ... based on the
second user input selecting a disease," which is directed to a result or effect,
and not a specific means or method that improves the relevant technology.
Appellants also argue,
In view of the Guidance, the Appellants respectfully
submit that the claims are directed toward significantly more
than the alleged judicial exception of "organizing human
activity" and "determining [guidance] guideline graphs,"
because independent claims 1, 12, and 23, and their dependent
claims recite 1) more than the words "apply it" and an abstract
idea, 2) a solution to a technological problem in conventional
industry via improvements to the processor performance of
receiving a user input selecting a disease and displaying a sub-
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graph including a portion of the guideline graph that includes
tasks for a specific user type, where the tasks are based on the
second user input selecting a disease, 3) the claims recite
specific, additional features that are not well understood,
routine, and conventional activities previously known in the
industry, and 4) the claims recite meaningful limitations beyond
mere general linkage to a particular technology.
(Appeal Br. 6-7).
We disagree with Appellants, and address Appellants' arguments in
the order presented.
First, we acknowledge that the claims use more than "apply it" on a
computer, but that does not make the claims patent-eligible. That is because
our analysis above considers all the elements of the claim-both
individually and as an ordered combination-to assess whether the
additional elements transform the nature of the claim into a patent-eligible
application of the abstract idea. Alice Corp., 134 S. Ct. at 2355. As found
supra, the claim elements, even as taken in an ordered combination, fail
transform the nature of the claim into a patent-eligible application of the
abstract idea.
Second, we disagree with Appellants that the claims recite "a solution
to a technological problem in conventional industry via improvements to the
processor performance." (Appeal Br. 6). From a technological standpoint,
the claims, at best, merely require, "a processor", "a memory" and "a
display" without mention of any improvement to such item(s). Moreover,
Appellants do not direct us to, nor can we find, a disclosure in the
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Specification that would support Appellants' argument that the claims at
issue here attempt to improve the aforementioned computer components in
anyway.
Third, Appellants off er no evidence in contradistinction to the
Examiner's findings to the well-known and conventional knowledge of the
involved interfaces:
For example, in the current state of the art many business
process management and business workflow tools present a
display of information that is specific to the role of the user to
provide a clearer view of work requirements. Further, the
examiner asserts that based on knowledge generally available to
those in the art interfaces that display clinical care protocols
based on input diseases are also well-known and conventional.
(Answer 19). Such an analysis is a factual determination. See Berkheimer v.
HP Inc., 881F.3d1360, 1369 (Fed. Cir. 2018) ("Whether something is well-
understood, routine, and conventional to a skilled artisan at the time of the
patent is a factual determination."). Since Appellants' Reply Brief offers no
specific argument in rebuttal to these specific findings, Appellants'
arguments are unpersuasive on this point too.
As to the fourth point argued by Appellants, that the claims recite
meaningful limitations beyond mere general linkage to a particular
technology, we refer to our analysis above directed to Appellants' first point.
Additionally, as we found supra, those portions of the claims which are not
directed to technology (e.g., "a processor" or "a display)" are nevertheless
directed to the abstract idea of determining tasks for a specific user type
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based on a selected disease in a guideline graph. Although the limitation is
meaningful, it is meaningful only as an abstraction and is patent-ineligible. 4
We disagree with Appellants that "the steps in claim 1 are not a
familiar part of the conscious process that doctors can and do perform in
their heads, as was the case in SmartGene." (Reply Br. 4). The claims in
SmartGene, 5 unlike those before us, required rules which a medical
practitioner would engage in to effect care for the patient, which, in tum, are
used by the computer to generate a ranked listing of therapeutic treatment
regiments. There are no such rules and automated ranking required by the
claims on appeal here. Moreover, displaying a guideline graph to a user
does not make an otherwise ineligible claim, patent-eligible, because the nub
of the process, the basing of tasks on a selected disease, would be the same.
Thus, to the extent the claims require a display of data, this is limited to
insignificant extra solution activity not covered under 35 U.S.C. § 101. See
In re Schrader, 22 F. 3d 290, 294 (Fed. Cir. 1994) (recording step of the
claimed process is incapable of imparting patent-eligibility under 35 U.S.C.
§ 101). Therefore, we do not find Appellants' argument persuasive.
4 Section 101 of Title 35 of the United States Code sets out the subject
matter that can be patented: "Whoever invents or discovers any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof, may obtain a patent therefor, subject to the
conditions and requirements of this title."
5 SmartGene, Inc. v. Advanced Biological Laboratories, SA, 555 F. App'x
(Fed. Cir. 2014).
19
Appeal2016-002870
Application 13/511,205
CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 1-23 under
35 U.S.C. § 101.
We conclude the Examiner did err in rejecting claims 1-23 under 35
U.S.C. § 103(a).
DECISION
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner's decision to reject claims 1-
23 is affirmed. See 37 C.F.R. § 41.50(a)(l ).
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).
AFFIRMED
20