International Business Machines Corporation

Patent Trials and Appeals Board

Mar 30, 2022

2021001051 (P.T.A.B. Mar. 30, 2022)

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. 15/615,983 06/07/2017 Corville O. Allen SVL920170001US1 3848 45725 7590 03/30/2022 Walder Intellectual Property Law PC 445 Crestover Circle Richardson, TX 75080 EXAMINER HOLCOMB, MARK ART UNIT PAPER NUMBER 3686 NOTIFICATION DATE DELIVERY MODE 03/30/2022 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): cwalder@walderiplaw.com swalder@walderiplaw.com tkacs@walderiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte CORVILLE O. ALLEN, ROBERTO DELIMA, AYSU EZEN CAN, and ROBERT C. SIZEMORE ____________ Appeal 2021-001051 Application 15/615,983 Technology Center 3600 ____________ Before MURRIEL E. CRAWFORD, BRADLEY B. BAYAT, and TARA L. HUTCHINGS, Administrative Patent Judges. CRAWFORD, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 seeks our review under 35 U.S.C. § 134 of the Examiner’s final rejection of claims 1, 4-9, 12-16, and 19-24. We have jurisdiction under 35 U.S.C. § 6(b). SUMMARY OF DECISION We AFFIRM. THE INVENTION 1 “Appellant” refers to the “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as International Business Machines Corporation. Appeal Br. 2. Appeal 2021-001051 Application 15/615,983 2 Appellant claims a data processing apparatus and method and more specifically “mechanisms for sorting medical concepts according to priority towards more accurate medical logic with the help of entity differentiation.” Spec. ¶ 1, Title. Claim 1 is representative of the subject matter on appeal. 1. A method, in a data processing system comprising at least one processor and at least one memory, the at least one memory comprising instructions executed by the at least one processor to cause the at least one processor to implement a cognitive medical system, the method comprising: determining, by the data processing system, a cognitive operation to be performed by the cognitive medical system; ingesting, by the cognitive medical system, a corpus of medical content, wherein the medical content comprises references to medical entities, and wherein ingesting the corpus comprises performing entity recognition on the medical content to identify the medical entities; identifying, by the cognitive medical system, a given medical entity having a plurality of annotations for an attribute and a primary diagnosis; determining, by an entity differentiation component executing within the cognitive medical system, an ordered set of entity differentiation algorithms for differentiating the given medical entity based on a set of clinical attributes and the cognitive operation to be performed by the cognitive medical system, wherein determining the ordered set of entity differentiation algorithms comprises: looking up the primacy diagnosis and the attribute in a first table data structure to determine the ordered set of entity differentiation algorithms; and looking up each entity differentiation algorithm within the ordered set of entity differentiation algorithms in a second table data structure to determine an implementation class and a list of parameters, wherein Appeal 2021-001051 Application 15/615,983 3 the list of parameters represent a priority order of information sources; running, by the entity differentiation component, the ordered set of entity differentiation algorithms, in order, on the plurality of annotations for the attribute based on the implementation class and the list of parameters to generate a ranked list of attributes; and performing, by the cognitive medical system, the cognitive operation on the given entity based on the ranked list of attributes. THE REJECTIONS Claims 1, 4-9, 12-16, and 19-24 are rejected under 35 U.S.C. § 101 as directed to a judicial exception without significantly more.2 Claims 1, 4-6, 8, 9, 12, 13, 15, 16, 19, and 21-24 are rejected under 35 U.S.C. § 103 as being obvious over McNair et al. (US 2015/0193583 A1; published July 9, 2015) (hereinafter “McNair”), in view of Becerra et al. (US 2010/0145734 A1; published June 10, 2010) (hereinafter “Becerra”), further in view of Gotz et al. (US 2014/0095186 A1; published Apr. 3, 2014) (hereinafter “Gotz”). Claims 7, 14 and 20 are rejected under 35 U.S.C. §103 as being obvious over McNair, Becerra, Gotz and further in view of Bukowski et al. (US 2005/0203930 A1; published Sept. 15, 2005) (hereinafter “Bukowski”). ANALYSIS 35 U.S.C. § 101 REJECTION 2 The rejection under 35 U.S.C. §112 has been withdrawn. (Ans. 3). Appeal 2021-001051 Application 15/615,983 4 We will sustain the rejection of claims 1, 4-9, 12-16, and 19-24 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, . . . 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 Bank Int’l, 573 U.S. 208, 217-218 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72-73 (2012)) (citations omitted). To perform this test, we must first determine whether the claims at issue are directed to a patent-ineligible concept. The Federal Circuit has explained that “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.’” See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). It asks whether the focus of the claims is on a specific improvement in relevant technology or on a process that itself qualifies as an “abstract idea” for which computers are invoked merely as a tool. See id. at 1335-36. Appeal 2021-001051 Application 15/615,983 5 In so doing we apply a “directed to” two prong test: 1) evaluate whether the claim recites a judicial exception, and 2) if the claim recites a judicial exception, evaluate whether the judicial exception is integrated into a practical application. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 FR 50, pp 50-57 (Jan. 7, 2019) (“Guidance”). The Examiner determines that the claims are directed to preparing a treatment plan and covers performance of the limitation in the mind but for recitation of generic computer components. Final Act. 7-8. The Examiner finds the judicial exception is not integrated into a practical application nor do the claims include significantly more than the judicial exception because the various structural elements including the processing system, the processor, the memory, the computer program product, the computer readable storage medium and the computing device are recited at a high level of generality that amount to no more than mere instructions to apply the exception using a generic computer component. Id. at 9. The Specification discloses that the present invention relates to mechanisms for sorting medical concepts according to priority towards more accurate medical logic with help of entity differentiation. Spec. ¶ 1. The medical logic provides the entity differentiation based on disease, concept and planned goal of a system. Spec. ¶ 23. The system is a cognitive system for healthcare applications which implements a request processing pipeline, request processing methodology, and request processing computer program product with which the mechanisms of the illustrative embodiments are implemented. Spec. ¶ 30. The system is for providing medical treatment recommendations for patients based on their specific features as obtained Appeal 2021-001051 Application 15/615,983 6 from various sources, e.g. patient electronic medical records (EMRs), patient questionnaires, etc. Consistent with this disclosure, claim 1 recites “ingesting, by the cognitive medical system, a corpus of medical content,” “determining . . . an ordered set of entity differentiation algorithms for differentiating the given medical entity based on a set of clinical attributes,” “looking up primary diagnosis and the attribute in a first table data structure.” We thus agree with the Examiner’s findings that the claims recite a method of preparing a treatment plan. We find the steps of “ingesting . . . a corpus of medical content,” “determining . . . an ordered set of entity differentiation algorithms for differentiating the given medical entity based on a set of clinical attributes,” “looking up primary diagnosis and the attribute in a first table data structure,” 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.” Elec. 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, 1355 (Fed. Cir. 2014) (claims directed to certain arrangements involving contractual relations are directed to abstract ideas). Thus, we find that claim 1 recites a mental process. Turning to the second prong of the “directed to test”, claim 1 requires a “processor and at least one memory.” This recitation does not impose “a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.” Guidance, 84 Fed. Reg. at 53. We find no indication in the Specification, nor does Appellant direct us to any indication, that the operations recited in claim 1 Appeal 2021-001051 Application 15/615,983 7 invoke any assertedly inventive programming, require any specialized computer hardware or other inventive computer components, i.e., a particular machine, or that the claimed invention is implemented using other than generic computer components to perform generic computer functions. See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[A]fter Alice, there can remain no doubt: recitation of generic computer limitations does not make an otherwise ineligible claim patent- eligible.”). We also find no indication in the Specification that the claimed invention affects a transformation or reduction of a particular article to a different state or thing. Nor do we find anything of record, short of attorney argument, that attributes any improvement in computer technology and/or functionality to the claimed invention or that otherwise indicates that the claimed invention integrates the abstract idea into a “practical application,” as that phrase is used in the revised Guidance. See Guidance, 84 Fed. Reg. at 55. In this regard, the recitation does not affect an improvement in the functioning of a processor or memory or other technology, does not recite a particular machine or manufacture that is integral to the claims, and does not transform or reduce a particular article to a different state or thing. Id. Thus, claim 1 recites a judicial exception that is not integrated into a practical application and thus claim 1 is directed to an “abstract idea.” Turning to the second step of the Alice analysis, because we find that claim is directed to an abstract idea, claim 1 must include an “inventive concept” in order to be patent-eligible, i.e., there must be an element or combination of elements that is sufficient to ensure that the claim in practice Appeal 2021-001051 Application 15/615,983 8 amounts to significantly more than the abstract idea itself. See Alice, 573 U.S. at 217-18 (alteration in original) (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72-73 (2012)). The introduction of a processor and memory into the claim does not alter the analysis at Alice step two. [T]he mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention. Stating an abstract idea “while adding the words ‘apply it’” is not enough for patent eligibility. Nor is limiting the use of an abstract idea “‘to a particular technological environment.’” Stating an abstract idea while adding the words “apply it with a computer” simply combines those two steps, with the same deficient result. Thus, if a patent’s recitation of a computer amounts to a mere instruction to “implemen[t]” an abstract idea “on . . . a computer,” that addition cannot impart patent eligibility. This conclusion accords with the preemption concern that undergirds our § 101 jurisprudence. Given the ubiquity of computers, wholly generic computer implementation is not generally the sort of “additional featur[e]” that provides any “practical assurance that the process is more than a drafting effort designed to monopolize the [abstract idea] itself.” Alice, 573 U.S. at 223 (alterations in original) (citations omitted). Instead, “the relevant question is whether claim 1 here does more than simply instruct the practitioner to implement the abstract idea . . . on a generic computer.” Id. at 225. It does not. Taking the claim elements separately, the function performed by the computer at each step of the process is purely conventional. Using a processor to retrieve, select, and apply decision criteria to data and modify the data as a result 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 Appeal 2021-001051 Application 15/615,983 9 trading industry. See Elec. Power Grp., 830 F.3d at 1354; 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”). In short, each step does no more than require a generic computer to perform generic computer functions. As to the data operated upon, “even if a process of collecting and analyzing information is ‘limited to particular content’ or a particular ‘source,’ that limitation does not make the collection and analysis other than abstract.” SAP Am. Inc. v. InvestPic, LLC, 890 F.3d 1016, 1022 (Fed. Cir. 2018). Considered as an ordered combination, the computer components of Appellant’s claims add nothing that is not already present when the steps are considered separately. The sequence of data reception-analysis- access/display 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) (holding that sequence of data retrieval, analysis, modification, generation, display, and transmission was abstract), Two-Way Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (holding sequence of processing, routing, controlling, and monitoring was abstract). The ordering of the steps is, therefore, ordinary and conventional. Claim 1 does not, for example, purport to improve the functioning of the processor and memory. As we stated above, claim 1 does not affect an Appeal 2021-001051 Application 15/615,983 10 improvement in any other technology or technical field. The Specification spells out different generic equipment and parameters that might be applied using this concept and the particular steps such conventional processing would entail based on the concept of information access under different scenarios. (See, e.g., Spec. ¶¶ 25, 27, 128). Thus, the additional elements recited in claim 1 amount to nothing significantly more than instructions to apply the abstract idea using some unspecified, generic computer. Under our precedents, that is not enough to transform an abstract idea into a patent- eligible invention. See Alice, 573 U.S. at 226. We have reviewed all the arguments (Appeal Br. 6-9; Reply Br. 2-8) Appellant has submitted concerning the patent eligibility of the claims before us that 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 emphasis, we will address various arguments in order to make individual rebuttals of same. We are not persuaded of error on the part of the Examiner by Appellant’s argument that the invention is specifically directed to a computerized cognitive medical system and that the Examiner has not established that a human mind would perform the functions recited in the claim. (Appeal Br. 6). Although, the steps recited by claim 1 are preformed “automatically,” mental processes remain unpatentable even when automated to reduce the burden on the user of what once could have been done with pen and paper. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (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 [409 U.S. 63 Appeal 2021-001051 Application 15/615,983 11 (1972)].”); see also In re Salwan, 681 F. App’x 938, 941 (Fed. Cir. 2017) (claims for organizing patient health information, transferring patient health information to a patient network, and billing insurance companies held patent-ineligible). In addition, in analyzing whether a claim recites a mental process, we analyze whether the claim could be done by the human mind not whether a human mind would do the process. Cybersource Corp. v. Retail Decisions, Inc., 654 F.3d at 1375. We do not agree with Appellant that the claimed invention includes additional elements that reflect improvement in the functioning of a computer or an improvement to another technology because the claims modify the way entity differentiation is performed based on the contents of two tables. Appeal Br. 7. We agree with the Examiner’s response to this argument found on page 5 of the Answer, i.e., that this argument is not persuasive because a database is a lookup table. In addition, the claim only recites that the table is presented and does not even recite that the table is updated much less improved. In addition, although the Appellant may be correct that the invention provides a much more versatile cognitive medical system, the improvements touted by the Appellant are improvements to preparing a treatment plan, which is the abstract idea itself. We are not persuaded of error on the part of the Examiner by Appellant’s argument that providing updatable tables improves the functioning of the cognitive system. Reply Br. 5. However, once again, the improvement touted by the Appellant in the area of accuracy are improvements to the way the processor prepares a treatment plan, not improvements to the operations of the computer or the memory. Appeal 2021-001051 Application 15/615,983 12 We do not agree with Appellant that the processor recited in claim 1 is a specialized computer system because as we discussed above, the Specification itself discloses that the computer system may be a general- purpose computer. Spec. ¶ 25. This disclosure is intrinsic evidence that the additional elements of the computer system of claim 1 is well understood, routine and conventional. In view of the foregoing, we will sustain the Examiner’s rejection of claim 1. We will also sustain this rejection as it is directed to the remaining claims because Appellant has not argued the separate eligibility of these claims. 35 U.S.C. § 103 REJECTIONS Each of the appealed claims requires the step of “determining. . . an ordered set of entity differentiation algorithms for differentiating the given medical entity based on a set of clinical attributes.” Appellant argues that this subject matter is not disclosed in the prior art. Appeal Br. 12. The Specification discloses that responsive to identifying a given medical entity having a plurality of annotations for an attribute, the system determines an ordered set of entity differentiation algorithms for differentiating the given medical entity based on the clinical attributes and cognitive operation to be performed. The method comprises running the ordered set of entity differentiation algorithms, in order, on the plurality of annotations for the attribute to generate a ranked list of attributes in prioritized order in terms of relevance. Spec. ¶ 7, 80, 83. The system ranks the attributes in order of relevance against all other attributes of the same type. Spec. ¶ 24. Appeal 2021-001051 Application 15/615,983 13 The Examiner relies on McNair at paragraphs 123 and 130 for teaching this subject matter and also finds that there is no particular indication of what the word “order” in claim 1 refers to. Ans. 9. We do not agree. We find that an ordered set of algorithms as recited in claim 1 refers to a set of algorithms that are ordered based on relevance and then executed based on that order. We find that McNair’s paragraphs 123 and 130 discloses that one set of health data nomenclature may be converted to a second nomenclature. In addition, a conditions menu is presented which displays conditions for which a patient may be at risk and presenting a condition risk area. There is no disclosure in these paragraphs about an ordered set of algorithms. In view of the foregoing, we will not sustain this rejection as it is directed to claim 1 and claims 4-7 dependent therefrom. We will also not sustain this rejection of the remaining claims for the same reasons. CONCLUSIONS OF LAW We conclude the Examiner did not err in rejecting claims 1, 4-9, 12- 16, and 19-24 under 35 U.S.C. § 101. We conclude the Examiner did err in rejecting claims 1, 4-9, 12-16, and 19-24 under 35 U.S.C. § 103. DECISION Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 4-9, 12- 16, 19-24 101 Eligibility 1, 4-9, 12- 16, 19-24 1, 4-6, 8, 9, 12, 13, 15, 103 McNair, Becerra, Gotz 1, 4-6, 8, 9, 12, 13, 15, Appeal 2021-001051 Application 15/615,983 14 16, 19, 21- 24 16, 19, 21- 24 7, 14, 20 103 McNair, Becerra, Gotz, Bukowski 7, 14, 20 Overall Outcome 1, 4-9, 12- 16, 19-24 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED