Hitachi, Ltd.

Patent Trials and Appeals Board

Feb 26, 2020

14278534 - (D) (P.T.A.B. Feb. 26, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/278,534 05/15/2014 Toshinori MIYOSHI HITACHI3-311250512US01 1157
3624 7590 02/26/2020
VOLPE AND KOENIG, P.C.
30 SOUTH 17TH STREET, 18th Floor
PHILADELPHIA, PA 19103
EXAMINER
NG, JONATHAN K
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
02/26/2020 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):
eoffice@volpe-koenig.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TOSHINORI MIYOSHI, YASUTAKA HASEGAWA,
HIDEYUKI BAN, TAKESHI NAGASAKI, and HIROSHI SHINJO

____________

Appeal 2018-004830
Application 14/278,534
Technology Center 3600

____________

Before BRUCE T. WIEDER, AMEE A. SHAH, and
MATTHEW S. MEYERS, Administrative Patent Judges.

WIEDER, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 seeks review under 35 U.S.C. § 134 from the Examiner’s
final rejection of claims 2–11.2 We have jurisdiction under 35 U.S.C. § 6(b).
An oral hearing was held February 4, 2020.
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Hitachi
Ltd. (Appeal Br. 3.)
2 In view of the cancellation of claim 1 (see Response filed
August 10, 2017), we treat the Examiner’s references to claim 1 in the Final
Action as harmless error (see, e.g., Final Action 1–3).

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CLAIMED SUBJECT MATTER
Appellant’s “invention relates to a data analysis technology, and more
particularly, to a system for analyzing medical data, to thereby support a
healthcare business.” (Spec. 1, ll. 9–11.)
Claims 2 and 11 are the independent claims on appeal. Claim 2 is
illustrative. It recites (some paragraphing added):
2. A medical data analysis system, comprising:
a communication interface;
a memory;
a processor communicatively coupled to the
communication interface and the memory;
wherein the processor:
obtains, from the memory, a dataset of insured
persons, wherein the dataset of insured persons includes
an injury and illness name of a insured person and a
medical action, cost information on the medical action,
and health checkup information including a test value
acquired by a health checkup,
obtains, from the memory, a first set of rules that
define a similarity between insured persons based on
medical information and health checkup information,
generates a vector space that arranges the dataset of
insured persons based on applying the first set of rules,
wherein a number of dimensions in the vector space is
determined so that an energy caused by an attractive force
and a repulsive force acting between the insured persons
set based on the similarity is less than a predetermined
threshold,
adds another dimension to the vector space,
adds a minute fluctuation for each of the insured
persons in the dataset of insured persons in a direction of
the another dimension,
calculates a minimum number of dimensions of the
vector space where the insured persons are stable with
respect to the minute fluctuation,
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generates a new vector space according to the
minimum number of dimensions calculated,
classifies each of the insured persons into clusters
based on the new vector space,
generates a pathologic transition model based on the
clusters,
calculates a transition probability between the
clusters;
reconfigures the pathologic transition model based
on the transition probability;
estimates, based on the pathologic transition model,
future state and medical cost of a disease; and
applies to the pathologic transition model to select,
based on the future state and the medical cost of the
disease estimated, one or more patients to receive health
guidance content.

REJECTION
Claims 2–11 are rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more.

ANALYSIS
Appellant does not separately argue claims 2–11. We select claim 2
as representative. Claims 3–11 will stand or fall with claim 2. See
37 C.F.R. § 41.37(c)(1)(iv).
“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.
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CLS Bank Int’l, 573 U.S. 208, 216 (2014) (quoting Ass’n for Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
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 USPTO, 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50, 54 (Jan. 7, 2019) (hereinafter “2019 Guidance”).
Here, the Examiner determines that claim 2 is directed to the abstract
idea of
collecting patient medical data with health checkup insurance
data and analyzing the data using rules to calculate a similarity
between patients, clusters the patients into models, calculate
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probability and reclassify models, estimate future costs and state
based on the models, and arrange the patients into vector spaces
sorted by dimensions.

(Final Action 3.)
Appellant argues that the present claims are patent eligible because
they “are directed to: (1) specific improvements in the technological area of
medical treatment; (2) implements a method that cannot be accomplished by
conventional manual processing; and (3) require specific data relationships
that are unique to medical technology.” (Appeal Br. 14.)
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).

Enfish, 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.
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The Specification provides evidence as to what the claimed invention
is directed. In this case, the Specification discloses that the “invention
relates to a data analysis technology, and more particularly, to a system for
analyzing medical data, to thereby support a healthcare business.” (Spec. 1,
ll. 9–11.) The Specification further discloses that “[i]t is necessary to select
people subject to the healthcare guidance by priority in order to effectively
and efficiently operate the insurance business” and that “a content of the
healthcare guidance appropriate for each of the subject people needs to be
selected.” (Id. at 2, ll. 8–12.) As a result of providing the appropriate
healthcare guidance, “medical cost reduction can be carried out.” (Id. at 44,
ll. 12–13.)
Claim 2 provides further evidence. Claim 2 recites “[a] medical data
analysis system comprising: a communication interface; a memory; a
processor communicatively coupled to the communication interface and the
memory; wherein the processor: obtains, from the memory, a dataset of
insured persons,” “obtains, from the memory, a first set of rules,” “generates
a vector space that arranges the dataset . . . based on applying the first set of
rules,” “adds another dimension to the vector space,” “adds a minute
fluctuation for each of the insured persons,” “calculates a minimum number
of dimensions of the vector space where the insured persons are stable with
respect to the minute fluctuation,” “generates a new vector space,”
“classifies each of the insured persons into clusters,” “generates a pathologic
transition model,” “calculates a transition probability between the clusters,”
“reconfigures the pathologic transition model,” “estimates . . . future state
and medical cost of a disease,” and “select[s], based on the future state and
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the medical cost of the disease estimated, one or more patients to receive
health guidance content.”
In sum, claim 2 recites a generic processor in communication with a
generic memory to obtain data and rules from the memory. (See Spec. 5,
l. 25 – 6, l. 15.) The processor generates a vector space and arranges the
data based on the rules, adds a dimension to the space, modifies the data (by
adding a minute fluctuation), calculates a minimum number of dimensions
of the space, generates a new vector space according to the calculated
number, analyzes data (to classify into clusters), generates a model,
calculates a probability, reconfigures the model, calculates values (to
estimate future state and medical costs), and selects data.
The claim limitations do not recite technological implementation
details for any of the steps. The claim limitations merely recite an algorithm
for calculating values, i.e., estimates of future state and medical costs, and,
based on the estimates, selects patients to receive health guidance content.
In other words, “[t]he focus of the claim[] . . . is on selecting certain
information, analyzing it using mathematical techniques, and reporting or
displaying the results of the analysis. That is all abstract.” SAP Am., Inc. v.
InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018).
“As many cases make clear, 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.” Id. at 1168. Moreover, the “character of [the] information simply
invokes a separate category of abstract ideas.” Id.
In view of the above, we determine that claim 2 is directed to
selecting patients to receive health guidance content in support of an
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insurance business, in this case, to reduce medical costs. In other words, we
determine that claim 2 is directed to insurance and reducing associated costs,
i.e., a fundamental economic principle and practice, and, thus, an abstract
idea, characterized as being directed to certain methods of organizing human
activity. (See 2019 Guidance at 52.)
Moreover, we do not see how the recitation of a generic
communication interface, generic memory, and generic processor, even in
conjunction with the recited functions, “ensure[s] ‘that the [claim] is more
than a drafting effort designed to monopolize the [abstract idea].’” See
Alice, 573 U.S. at 221 (brackets in original) (quoting Mayo, 566 U.S. at 77.)
Regardless, Appellant argues that “[t]he present claims recite a
structured series of steps that do not entirely preempt the field. Therefore,
like the claims in [McRO, Inc. v. Bandai Namco Games America Inc., 837
F.3d 1299 (Fed. Cir. 2016)], the present claims are patent eligible.” (Appeal
Br. 12.) We do not find this argument persuasive. “The claimed
improvement [in McRO] was to how the physical display operated (to
produce better quality images), unlike (what is present here) a claimed
improvement in [selecting patients to receive health care guidance content]
with no improved display mechanism.” SAP Am., Inc., 898 F.3d at 1167.3

3 Appellant argues that in the Answer, the Examiner erroneously states that
McRO holds “that ‘[t]he test [for eligibility under 35 U.S.C. §101] is where a
computer could not physically perform the identified functions prior to the
invention and whether the claimed invention solved this problem.’
(Examiner’s Answer, Pg. 4).” (Reply Br. 4 (brackets in original).) Even if
we agreed with Appellant that this test was described by the Examiner, we
would find it to be harmless error in this case because the Examiner did not
rely on such an exclusive “test.” In relevant part, the Examiner determined
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Appellant also argues that, unlike the claims in Ariosa Diagnostics,
Inc. v. Sequenom, Inc., 788 F.3d 1371 (Fed. Cir. 2015), “[i]n the present
case, the claims are directed to [a] ‘medical data analysis system’ and not a
natural phenomenon. Accordingly, unlike in Ariosa Diagnostics, the issue
of preemption in not rendered moot.” (Reply Br. 11.) We do not find this
argument persuasive. The Federal Circuit informs us that regardless of
whether we are discussing “abstract ideas, naturally occurring phenomena,
[or] natural laws,” “preemption may signal patent ineligible subject matter,
[but] the absence of complete preemption does not demonstrate patent
eligibility.” Ariosa Diagnostics, Inc., 788 F.3d at 1379.
Appellant argues that “[t]he present claims are directed to specific
improvements in the technological area of medical treatment.” (Appeal
Br. 14 (emphasis omitted).) Appellant argues that “[t]he objective of the
invention therefore is to determine dimensionality for which important
factors are unknown by using medical information, cost information and
health checkup information. As a result, the present claims represent more
than general clustering.” (Id. at 15.) We do not find this argument
persuasive.

that McRO “held that [for purposes of determining whether the claimed
subject matter is directed to an abstract idea under step one of the Alice
framework] an improvement [in the relevant technology] may be one that
‘that [sic] improve[s] computer-related technology by allowing computer
performance of a function not previously performable by a computer.’
There is nothing in the Applicant’s invention that allows a computer to
perform functions not previously performable by a computer.” (Answer 4
(quoting “Recent Subject Matter Eligibility Decisions,” Memorandum,
Robert W. Bahr, Deputy Commissioner for Patent Examination Policy, Nov.
2, 2016) (last brackets in original, emphasis added).)
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“[L]imiting the claims to [a] particular technological environment . . .
is, without more, insufficient to transform them into patent-eligible
applications of the abstract idea at their core.” Elec. Power Grp., 830 F.3d
at 1354. Moreover, the asserted improvement is to the information
provided, i.e., the selection of patients to receive health care guidance
content. The “communication interface,” “memory,” and “processor,” are
used merely as tools to perform the abstract idea. But “[n]o matter how
much of an advance in the [healthcare] field the claims recite, the advance
lies entirely in the realm of abstract ideas, with no plausibly alleged
innovation in the non-abstract application realm.” SAP America, Inc., 898
F.3d at 1163.
In cases involving software innovations, such as we have here, the
inquiry as to whether the claims are directed to an abstract idea “often turns
on whether the claims focus on ‘the specific asserted improvement in
computer capabilities . . . or, instead, on a process that qualifies as an
“abstract idea” for which computers are invoked merely as a tool.’” Finjan,
Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1303 (Fed. Cir. 2018) (quoting
Enfish, LLC, 822 F.3d at 1335–36). Appellant does not explain how the
claimed invention improves the capabilities of the generic communication
interface, the generic memory, or the generic processor. Here, the computer
components are invoked merely as tools.
Moreover, we find no indication in the Specification that the claimed
invention effects a transformation or reduction of a particular article to a
different state or thing. Nor do we find anything of record that attributes an
improvement in computer technology or functionality to the claimed
invention or that otherwise indicates that the claimed invention “appl[ies],
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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
Guidance at 54–55.)
Thus, under prong one of the two prong test in the 2019 Guidance,
claim 2 recites an abstract idea; and, under prong two, additional elements in
claim 2 do not “apply, rely on, or use the judicial exception in a manner that
imposes a meaningful limit on the judicial exception, such that the claim is
more than a drafting effort designed to monopolize the judicial exception.”
(See 2019 Guidance at 54.) As such, under step one of the Alice framework,
the claims are directed to an abstract idea, and we move to step two.
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 (brackets in original) (quoting Mayo, 566 U.S. at 72–73).
Appellant argues that the claimed technique “is different from the
conventional manual processing. Further, the Office Action has failed to
proffer any evidence that this technique is well known in the art. In fact, the
Office Action does not even raise a novelty or obviousness rejection based
on this alleged ‘well-known in the art’ technique.” (Appeal Br. 18
(emphasis omitted).) We do not find this argument persuasive.
Even if the claimed techniques are different from those used in
conventional manual processing, indeed even if the claimed techniques are
“[g]roundbreaking, innovative, or even brilliant,” that is not enough for
patent eligibility. Ass’n for Molecular Pathology, 569 U.S. at 591. “The
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‘novelty’ of any element or steps in a process, or even of the process itself, is
of no relevance in determining whether the subject matter of a claim falls
within the § 101 categories of possibly patentable subject matter.” Diamond
v. Diehr, 450 U.S. 175, 188–89 (1981). In other words, “under the
Mayo/Alice framework, a claim directed to a newly discovered law of nature
(or natural phenomenon or abstract idea) cannot rely on the novelty of that
discovery for the inventive concept necessary for patent eligibility.” Genetic
Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016).
Appellant also argues that “the present claims solve the specific
problems in the technological area of medical treatment by the specific
function. Therefore, the present claims are eligible under Alice step 2.”
(Appeal Br. 17 (emphasis omitted).) We do not find this argument
persuasive. “It 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). The claimed invention is, at most, an improvement to the
performance of the abstract idea, in this case, an improvement to insurance
and reducing associated costs, i.e., certain methods of organizing human
activity. (See supra; see also 2019 Guidance at 52.)
Taking the claim elements separately, the functions performed in
claim 2 by the generic communication interface, generic processor, and
generic memory device, are purely conventional. (See, e.g., Spec. 5, l. 25 –
6, l. 15.) Obtaining data, analyzing data, and selecting results 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
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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 computer
components of Appellant’s claimed invention add nothing that is not already
present when the limitations are considered separately. For example,
claim 2 does not, as discussed above, purport to improve the functioning of
the computer components themselves. Nor does it effect an improvement in
any other technology or technical field. Instead, claim 2 amounts to nothing
significantly more than an instruction to apply the abstract idea using generic
computer components performing routine computer functions. (See Final
Action 4.) That is not enough to transform an abstract idea into a patent-
eligible invention. See Alice, 573 U.S. at 225–26.
In view of the above, we are not persuaded that the Examiner erred in
rejecting claim 2. Claims 3–11 fall with claim 2. See 37 C.F.R.
§ 41.37(c)(1)(iv).

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CONCLUSION
The Examiner’s rejection of claims 2–11 under 35 U.S.C. § 101 is
affirmed.

Specifically:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
2–11 101 eligibility 2–11

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)(1)(iv).

AFFIRMED