Ex Parte Vdovjak et al

Patent Trials and Appeals Board

Mar 29, 2019

13132951 - (D) (P.T.A.B. Mar. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/132,951 06/06/2011 Richard Vdovjak
24737 7590 04/02/2019
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.
2008P01103WOUS 9283
EXAMINER
LULTSCHIK, WILLIAM G
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
04/02/2019 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 RICHARD VDOVJAK and ANCA IOANA DANIELA BUCUR
Appeal2018-001893
Application 13/132,951 1
Technology Center 3600
Before HUBERT C. LORIN, BART A. GERSTENBLITH, and
BRUCE T. WIEDER, Administrative Patent Judges.
WIEDER, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 4, 6, 8-14, and 27-37. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
Appellants' invention relates to "[a] method ... for using assertions to
reconcile records." (Spec., Abstract.)
1 According to Appellants, the real party in interest is Koninklijke Philips
N. V. (Appeal Br. 1.)
Appeal 2018-001893
Application 13/132,951
Claims 9, 2 7, and 3 3 are the independent claims on appeal. Claim 9 is
illustrative. It recites: 2
9. A method of reconciling customer records between
a plurality of sites comprising:
assigning a unique record number to a customer record
with one or more processors;
with the one or more processors, retrieving demographic
information for a customer record to match said demographic
information against demographic information in a collection of
records in other systems to find records that belong to the same
customer stored in a database;
comparing the customer record demographic information
with at least one other record demographic information in the
collection of records in at least one other system to derive a
likelihood ratio for each compared record with the one or more
processors;
comparing each likelihood ratio to a defined accept
threshold and to a defined reject threshold with the one or more
processors, the comparing including:
rejecting the compared customer records if the
likelihood ratio falls below a reject threshold ratio,
accepting the compared customer records if the
likelihood ratio falls above an accept threshold ratio, and
identifying the customer records for a manual
review if the likelihood ratio falls between the accept
threshold and the reject threshold;
attaching an assertion for the compared customer records
based on at least one likelihood ratio comparison with the one or
more processors;
with the one or more processors, placing the customer
records to be manually reviewed on an exceptions list and
distributing the exception list electronically to the plurality of
sites;
2 Claim 9, as listed in the Appeal Brief (Appeal Br. 30-32), differs in format
from claim 9 as shown in Appellants' February 22, 2017 Response that was
entered by the Examiner on May 12, 2017. The latter, entered by the
Examiner, appears here.
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recording a determination of an accept or reject results
made by manual review at each relevant site;
at least one of:
making a positive assertion in response to a
recorded accept result, the positive assertion asserting that
the two compared records are related to the same
customer, or
making a negative assertion in response to a recorded
reject result, the negative assertion asserting that the two
compared records are not related to the same customer; and
wherein the step of making the acceptance or rejection
assertion is performed at a plurality of user sites and further
including:
notifying the user sites when two sites make conflicting
assertions about a common record.
REJECTION
Claims 4, 6, 8-14, and 27-37 are rejected under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more.
ANALYSIS
Claims 6. 9. 11. 13. 14. 27. 29. 32. 33. and 37
"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." 35 U.S.C. § 101. Section 101, however,
"'contains an important implicit exception: Laws of nature, natural
phenomena, and abstract ideas are not patentable."' Alice Corp. Pty. Ltd. v.
CLS Bank Int 'l, 573 U.S. 208, 216 (2014) ( quoting Assoc. for Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
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Alice applies a two-step framework, earlier set out in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66
(2012), "for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts." Alice, 573 U.S. at 217.
Under the two-step framework, it must first be determined if "the
claims at issue are directed to a patent-ineligible concept." Id. at 218. If the
claims are determined to be directed to a patent-ineligible concept, e.g., an
abstract idea, then the second step of the framework is applied to determine
if "the elements of the claim ... contain[] an 'inventive concept' sufficient
to 'transform' the claimed abstract idea into a patent-eligible application."
Id. at 221 (citing Mayo, 566 U.S. at 72-73, 79).
With regard to step one of the Alice framework, we apply a "directed
to" two prong test to: 1) evaluate whether the claim recites a judicial
exception, and 2) if the claim recites a judicial exception, evaluate whether
the claim "appl[ies ], rel[ies] on, or use[ s] 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." See 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50, 54 (Jan. 7, 2019) (hereinafter "2019 Guidance").
Here, the Examiner determines that claim 9 is directed to "an idea of
itself," i.e., an abstract idea similar to "comparing new and stored
information and using rules to identify options." (Final Action 7.) The
Examiner also determines that the claim is "similar to the abstract idea of
collecting and comparing known information." (Id. at 8.) The Examiner
also determines that "determining whether two records correspond to the
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same patient is a task which has traditionally been performed mentally. (Id.
at 3.)
Appellants disagree and argue "that the present claims do no[t] claim
an end result, but rather claim only a limited and specific apparatus or
method for achieving the end result, hence are not directed to an abstract
idea." (Appeal Br. 11.)
Under step one of the Alice framework, we "look at 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 Texas, LLC
v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)).
The "directed to" inquiry ... cannot simply ask whether the
claims involve a patent-ineligible concept, because essentially
every routinely patent-eligible claim involving physical products
and actions involves a law of nature and/or natural phenomenon
. . . . Rather, the "directed to" inquiry applies a stage-one filter
to claims, considered in light of the specification, based on
whether "their character as a whole is directed to excluded
subject matter." Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015).
Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). In
other words, the first step of the Alice framework "asks whether the focus of
the claims is on the specific asserted improvement in [the relevant
technology] or, instead, on a process that qualifies as an 'abstract idea' for
which computers are invoked merely as a tool." Id. at 1335-36; see also
2019 Guidance at 54--55.
The Specification provides evidence as to what the claimed invention
is directed. In this case, the Specification discloses that the invention relates
to "[a] method ... for using assertions to reconcile records." (Spec.,
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Abstract.) Claim 9 provides further evidence. Claim 9 recites "[a] method
of reconciling customer records between a plurality of sites comprising:
assigning a unique record number to a customer record," "retrieving
demographic information for a customer record," "comparing the customer
record demographic information with at least one other record demographic
information in the collection of records ... to derive a likelihood ratio,"
"comparing each likelihood ratio to a defined accept threshold and to a
defined reject threshold," "attaching an assertion for the compared customer
records," "placing the customer records to be manually reviewed on an
exceptions list and distributing the exception[ s] list," "recording a
determination of an accept or reject results made by manual review," and
"notifying the user sites when two sites make conflicting assertions about a
common record." In other words, claim 9 is directed to the abstract idea of
mental processes, i.e., observing and evaluating information, making
judgments based on those observations and evaluations, and providing
results. This is accomplished by comparing stored information, using rules
to identify options, and providing the results. See, e.g., In re TL! Commc 'ns
LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016) ("[T]he recited
physical components merely provide a generic environment in which to
carry out the abstract idea of classifying and storing [information] in an
organized manner."), Content Extraction and Transmission LLC v. Wells
Fargo Bank, Nat'! Ass 'n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) ("[T]he
claims of the asserted patents are drawn to the abstract idea of 1) collecting
data, 2) recognizing certain data within the collected data set, and 3) storing
that recognized data in a memory."); see also 2019 Guidance at 52. This is
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performed by using generic processors and manual review. (See Spec. p. 10,
11. 29--30.)
Although we and the Examiner describe, at different levels of
abstraction, to what the claims are directed, it is recognized that "[a]n
abstract idea can generally be described at different levels of abstraction."
Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016). That
need not and, in this case does not, "impact the patentability analysis." See
id. at 1241.
Appellants do not argue that they invented processors or databases.
Nor do we see how the recitation of generic processors and a database, even
in conjunction with the recited functions, "ensure[ s] 'that the [claim] is more
than a drafting effort designed to monopolize the [abstract idea]." Alice, 573
U.S. at 221 (brackets in original) (quoting Mayo, 566 U.S. at 77.) Moreover,
the limitations of claim 9 do not recite implementation details. Rather, "the
recited physical components merely provide a generic environment in which
to carry out the abstract idea." In re TL! Commc 'ns LLC Patent Litig., 823
F.3d at 611.
"[W]e have treated collecting information, including when limited to
particular content (which does not change its character as information), as
within the realm of abstract ideas." Elec. Power Grp., 830 F.3d at 1353. "In
a similar vein, we have treated 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." Id. at 1354.
Additionally, the Federal Circuit has "recognized that merely presenting the
results of abstract processes of collecting and analyzing information, without
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more (such as identifying a particular tool for presentation), is abstract as an
ancillary part of such collection and analysis." Id.
Regardless, Appellants seek to analogize claim 9 to "example 36,
claim 2 of the PTO's December 15, 2016 example claim set." (Appeal
Br. 12.) Specifically, Appellants argue that
[a]nalogously to the PTO's example claim, the claims of the
present application solve problems arising in a specific technical
area. Specifically, the claims solve problems arising in the realm
of patient record technology, and, in particular to data continuity
of a patient record. Particularly, the claims solve the problem of
how to reconcile patient records from multiple, geographically
spaced sites.
(Appeal Br. 13.) We do not find this argument persuasive. Claim 2 of
Example 36 recites "[a] system for managing an inventory record" and "a
high-resolution video camera array, each video camera positioned at pre-
determined locations with overlapping views, for acquiring at least one high-
resolution image sequence of each item of inventory." (Subject Matter
Eligibility Example: Business Methods (December 2016) ( available at
https://www.uspto.gov/sites/default/files/documents/ieg-bus-meth-exs-
dec2016.pdf) at 13 (hereinafter "2016 Examples").) Similarly, claim 1 of
Example 36 recites "[a] system for managing an inventory record," but does
not recite the video camera array. Claim 1 is described as directed to patent-
ineligible subject matter. (Id. at 14--15.) With regard to claim 2, the 2016
Examples explain that
the memory and processor in combination with a high-resolution
video camera array with predetermined overlapping views that
reconstructs the 3-D coordinates of the item of inventory using
overlapping images of the item and prior knowledge of the
location and field of view of the camera(s) provides significantly
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more than the abstract idea of using data collection techniques to
manage inventory.
(Id. at 16.) Appellants do not persuasively argue why Appellants' claim 9 is
analogous to claim 2, but not claim 1, in Example 36. Additionally, we note
that "[ e ]ligibility-related guidance issued prior to the Ninth Edition, R-
08.2017, of the MPEP (published Jan. 2018) should not be relied upon."
(2019 Guidance at 51.)
Appellants also seek to analogize claim 9 to the claims in McRO, Inc.
v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1313 (Fed. Cir. 2016),
Enfzsh LLC, 822 F.3d 1327, and Diamond v. Diehr, 450 U.S. 175 (1981).
(Reply Br. 3-5.) Specifically, Appellants argue that "the present claims are
directed to collecting data from parking centers and traffic routes across
multiple, geographically spaced locations and analyzing the data to
determine pricing information . . . . Thus, the computer is controlled by the
processor via the processed data, which is a patent-eligible application." (Id.
at 4--5.) As an initial matter, Appellants' argument is not commensurate
with the scope of claim 9. Claim 9 does not recite parking centers, traffic
routes, or a computer.
With regard to Appellants' argument that "the present claims improve
computer related technology in regards to reconcile [sic] patient records" (id.
at 3) analogous to the claims in McRO and Enfish, we do not agree. Claim 9
simply uses generic processors and manual review to perform the abstract
idea, i.e., observing and evaluating information and making judgments based
on those observations and evaluations. This does not improve the processor
related technology. See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d
1245, 1256 (Fed. Cir. 2014).
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In contrast, in McRO, the court determined that
the claimed improvement here is allowing computers to produce
"accurate and realistic lip synchronization and facial expressions
in animated characters" that previously could only be produced
by human animators. As the district court correctly recognized,
this computer automation is realized by improving the prior art
through "the use of rules, rather than artists, to set the morph
weights and transitions between phonemes." The rules are
limiting in that they define morph weight sets as a function of the
timing of phoneme sub-sequences.
McRO, 837 F.3d at 1313 (citations omitted). Unlike McRO, here, the
asserted improvements are to observing and evaluating information and
making judgments, i.e., simply improvements to the abstract idea. Also
unlike McRO, claim 9 merely recites functional results to be achieved. And
the mere function of, e.g., receiving and comparing data, is not a "specific
improvement to the way computers operate." Enfish, 822 F.3d at 1336.
In view of the above, we agree with the Examiner that claim 9 is
directed to an abstract idea.
Step two of the Alice framework has been described "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, 573 U.S. at 217-
18 (citing Mayo, 566 U.S. at 72-73).
Appellants argue:
Even though the claims do not need to be analyzed under
the second step of Alice, the present claims recite significantly
more. The present claims are directed to systems and methods
for reconciling customer records between a plurality of different
sites. This is a complex process in which patient records must be
analyzed at multiple sites an[ d] edited at each of these multiple
sites to reconcile a patient record.
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(Appeal Br. 25.)
We do not find this argument persuasive. Appellants' argument relies
on the ineligible concept itself to establish that the claims recite an inventive
concept. But "[i]t has been clear since Alice that a claimed invention's use
of the ineligible concept to which it is directed cannot supply the inventive
concept that renders the invention 'significantly more' than that ineligible
concept." BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed.
Cir. 2018).
Taking the claim elements separately, the functions performed by the
generic processors and database are purely conventional. Receiving
information, comparing information ( even if done by the processors),
analyzing information (i.e., sorting/placing selected customer records on a
list), and storing results are basic computer functions, i.e., they are well-
understood, routine, and conventional functions previously known to the
industry. See Elec. Power Grp., 830 F.3d at 1356 (The claims "do not
include any requirement for performing the claimed functions of gathering,
analyzing, and displaying in real time by use of anything but entirely
conventional, generic technology. The claims therefore do not state an
arguably inventive concept .... "); see also 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.").
Considered as an ordered combination, the generic components of
Appellants' method add nothing that is not already present when the
limitations are considered separately. For example, claim 9 does not, as
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discussed above, purport to improve the functioning of the processors or
database. Nor does it effect an improvement in any other technology or
technical field. Instead, claim 9 amounts to nothing significantly more than
an instruction to apply the abstract idea using generic computer components
and manual review. That is not enough to transform an abstract idea into a
patent-eligible invention. See Alice, 573 U.S. at 225-26.
Appellants' other arguments have been considered but are not
persuasive of error.
In view of the above, we are not persuaded that the Examiner erred in
rejecting claim 9. Independent claims 27 and 33 contain similar language
and Appellants present similar arguments. (See Appeal Br. 15-20, 21-27.)
For similar reasons, we are not persuaded that the Examiner erred in
rejecting claims 27 and 33. Dependent claims 6, 11, 13, 14, 29, 32, and 37
are not separately argued. These claims fall with claims 9, 2 7, and 3 3. See
37 C.F.R. § 4I.37(c)(l)(iv).
Claims 4. 28. and 34
Claim 4 depends from claim 9 and recites "wherein the assertions for
a pair of records are made at a plurality of sites."
Appellants argue that claim 4 "recites features that further describe
how these geographically-dispersed centers reconcile patient records."
(Appeal Br. 14.) We do not find this argument persuasive.
Appellants do not persuasively argue why reciting where the function
is performed should change the determination that the claim is directed to
the abstract idea of observing and evaluating information and making
judgments based on those observations and evaluations. Moreover, like
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claim 9, claim 4 does not recite how the claimed results are achieved.
Instead, claim 4 merely recites where the function is performed. And, in this
case, merely reciting where the function is performed is not a "specific
improvement to the way computers operate." See Enfish, 822 F.3d at 1336.
Therefore, we are not persuaded of error.
Dependent claims 28 and 34 contain similar language and Appellants
present similar arguments. (See Appeal Br. 20-21, 27.) For similar reasons,
we are not persuaded that the Examiner erred in rejecting claims 28 and 34.
Claim 8. 30. and 35
Claim 8 depends from claim 9 and recites "wherein the assertions are
stored in a database in at least one of a central repository and a plurality of
sites."
Appellants argue that claim 8 "recites features that further describe
how these geographically-dispersed centers reconcile patient records."
(Appeal Br. 14.) We do not find this argument persuasive.
Appellants do not persuasively argue why storing the recited
information in a generic database should change the determination that the
claim is directed to the abstract idea of observing and evaluating information
and making judgments based on those observations and evaluations.
Moreover, like claim 9, claim 8 does not recite how the claimed results are
achieved. Instead, claim 8 merely recites performing the storing function.
And, in this case, merely reciting the function is not a "specific improvement
to the way computers operate." See Enfish, 822 F.3d at 1336. Therefore, we
are not persuaded of error.
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Dependent claims 30 and 35 contain similar language and Appellants
present similar arguments. (See Appeal Br. 21, 27-28.) For similar reasons,
we are not persuaded that the Examiner erred in rejecting claims 30 and 35.
Claim 12
Claim 12 depends from claim 9 and recites "wherein the customers
are medical patients receiving medical services at one or more of a plurality
of medical facilities."
Appellants argue that claim 12 "recites features that further describe
how these geographically-dispersed centers reconcile patient records."
(Appeal Br. 15.) We do not find this argument persuasive.
Appellants do not persuasively argue why specifying the type of
customer should change the determination that the claim is directed to the
abstract idea of observing and evaluating information and making judgments
based on those observations and evaluations. Moreover, to the extent
Appellants' argument is related to the type of information likely associated
with health records, as opposed to the more general "customer records"
recited in claim 9, we do not find this argument persuasive. Limiting
information to particular content "does not change its character as
information." Elec. Power Grp., 830 F.3d at 1353. Therefore, we are not
persuaded of error.
Claims 10. 31. and 36
Claim 10 depends from claim 9 and recites "wherein the conflicting
assertions about the common record include at least one of: the site where
the assertion was made, a person who made the assertion, and a time stamp."
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Appellants argue that claim 103 "recites features that further describe
how these geographically-dispersed centers reconcile patient records."
(Appeal Br. 14.) We do not find this argument persuasive.
Appellants do not persuasively argue why specifying the type of
information conveyed should change the determination that the claim is
directed to the abstract idea of observing and evaluating information and
making judgments based on those observations and evaluations. Moreover,
as discussed above, limiting information to particular content "does not
change its character as information." Elec. Power Grp., 830 F.3d at 1353.
Therefore, we are not persuaded of error.
Dependent claims 31 and 3 6 contain similar language and Appellants
present similar arguments. (See Appeal Br. 21, 28.) For similar reasons, we
are not persuaded that the Examiner erred in rejecting claims 31 and 36.
DECISION
The Examiner's rejection of claims 4, 6, 8-14, and 27-37 under
35 U.S.C. § 101 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).
AFFIRMED
3 Appellants refer to "Claim 9," but describe claim 10. (See Appeal Br. 14,
Reply Br. 6.) We treat these references to claim 9 as typographical errors.
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