KONINKLIJKE PHILIPS N.V.

Patent Trials and Appeals Board

Mar 3, 2020

14511317 - (D) (P.T.A.B. Mar. 3, 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.
14/511,317 10/10/2014 Julian Charles NOLAN 2013P00110US 3289
24737 7590 03/03/2020
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus Avenue
Suite 340
Valhalla, NY 10595
EXAMINER
BARR, MARY EVANGELINE
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
03/03/2020 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):
katelyn.mulroy@philips.com
marianne.fox@philips.com
patti.demichele@Philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JULIAN CHARLES NOLAN, MELANIE JANE WINDRIDGE,
JOYCA PETRA WILMA LACROIX, CEES VAN BERKEL, and JAN
TATOUSEK
Appeal 2019-003364
Application 14/511,317
Technology Center 3600
Before ADAM J. PYONIN, PHILLIP A. BENNETT, and
IFTIKHAR AHMED, Administrative Patent Judges.
PYONIN, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s rejection. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as
KONINKLIJKE PHILIPS ELECTRONICS N.V. Appeal Br. 2.
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STATEMENT OF THE CASE
Introduction
The Application is directed to a “system and method for messaging a
[first] user” who has a health condition, in which the system provides a
“ranking of the messages from [] second users and the output of the
messages in consideration of this ranking ensures that the most important or
most relevant messages are given the appropriate attention by the first user.”
Page 46 of the Specification filed October 10, 2014 (hereafter, “Spec.”).
Claims 1–7, 13, 14, and 16–20 are pending; claims 1, 16, and 19 are
independent. App. Br. 24–30. Claim 1 is reproduced below for reference
(emphases and bracketed numbering added):
1. A system for facilitating messaging for therapy adherence
via influence-based message inundation impact reduction, the
system comprising one or more processors configured by
machine readable instructions to:
[1] store therapeutic activity information including
information on therapeutic activities forming part of a
therapeutic regime of a first user, the therapeutic regime of the
first user relating to a health condition of the first user;
[2] monitor adherence of the first user to a therapeutic
activity in the therapeutic regime;
[3] send a first message associated with the first user to
second users, wherein the first message includes an indication of
the adherence of the first user to the therapeutic activity;
[4] determine an influence factor between the first user
and each second user of the second users, the influence factor
indicating influence of the second user on the adherence of the
first user to the therapeutic activity;
[5] assign a ranking score to each second user of the
second users, based on the influence factor between the first user
and the second user, such that the ranking score of a given second
user of the second users is greater than the ranking score of
another second user of the second users based on the influence
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factor between the first user and the given second user being
greater than the influence factor between the first user and the
other second user;
[6] send a message prompt to one or more second users of
the second users based on (i) the ranking scores of the one or
more second users satisfying a predetermined score threshold
and (ii) a lack of a response to the first message from the one or
more second users, the message prompt including a prompt to
send a response to the first user;
[7] receive responses to the first message from the second
users, the responses to the first message including one or more
responses received from the one or more second users responsive
to the message prompt; and
[8] cause the responses to the first message to be presented
to the first user based on the ranking scores of the second users
such that presentation of the response to the first message from
the given second user is prioritized over presentation of the
response to the first message from the other second user.
References and Rejections2
The Examiner relies on the following prior art:
Name Reference Date
Horvitz US 2007/0288932 A1 Dec. 13, 2007
Carter US 2009/0307345 A1 Dec. 10, 2009
Fradkin US 2011/0125555 A1 May 26, 2011
Schuster US 2011/0131060 A1 June 2, 2011
Hegeman US 2012/0066140 A1 Mar. 15, 2012
Neystadt US 2012/0210240 A1 Aug. 16, 2012

Claims 1–7, 13, 14, and 16–20 are rejected under 35 U.S.C. § 101 as
being patent ineligible. Final Act. 2.

2 The Examiner has withdrawn the indefiniteness rejection of claims 1–7, 13,
14, and 16–20. See Ans. 4.
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Claims 3, 7, and 18 are rejected under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement. Final Act. 6.
Claims 1, 3–7, 14, 16, and 18–20 are rejected under 35 U.S.C. § 103
as being unpatentable over Hegeman, Carter, Neystadt, Fradkin, and
Schuster. Final Act. 8.
Claims 2, 13, and 17 are rejected under 35 U.S.C. § 103 as being
unpatentable over Hegeman, Carter, Neystadt, Fradkin, Schuster, and
Horvitz. Final Act. 22.

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments. Arguments Appellant could have made but chose not to make
are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv). We discuss each
of the statutory grounds of rejection in turn, below.

Patent Eligibility
The Examiner determines the claims are patent ineligible under 35
U.S.C. § 101, because “the claimed invention is directed to a judicial
exception (i.e., a law of nature, a natural phenomenon, or an abstract idea)
without significantly more.” Final Act. 2; see also Alice Corp. v. CLS Bank
Int’l, 573 U.S. 208, 217 (2014) (describing the two-step framework “for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts.”).
After the filing of the Notice of Appeal in this case—but prior to the
mailing of the Answer or the filing of the Reply Brief—the USPTO
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published revised guidance on the application of § 101 (“Guidance”). See,
e.g., USPTO 2019 Revised Patent Subject Matter Eligibility Guidance, 84
Fed. Reg. 50 (Jan. 7, 2019) (“Memorandum”); USPTO October 2019
Update: Subject Matter Eligibility (Oct. 17, 2019) (“Update”), noticed at 84
Fed. Reg. 55,942 (Oct. 18, 2019).
Under Step 2A of the Guidance, the Office looks to whether the claim
recites:
(1) Prong One: any judicial exceptions, including certain
groupings of abstract ideas (i.e., mathematical concepts, certain
methods of organizing human activity such as a fundamental
economic practice, or mental processes); and
(2) Prong Two: additional elements that integrate the judicial
exception into a practical application (see MPEP § 2106.05(a)–
(c), (e)–(h)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, does the Office then look, under Step
2B, to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not well-understood, routine, conventional in the field (see
MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See Memorandum, 84 Fed. Reg. at 56.
We agree with, and adopt as our own, the Examiner’s eligibility
analysis. We add the following primarily for emphasis and clarification with
respect to the Guidance.
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A. Step 2A, Prong One
“Appellant respectfully submits that the[] claims are and remain
patent-eligible under the newly revised and previous guidelines which the
USPTO applied to 35 U.S.C. § 101.” Reply Br. 2. With respect to Prong
One of the Guidance, Appellant contends “Appellant submits that the
independent claims do not recite matter that falls within the [judicially
excepted] enumerated groups,” as the claims do not recite any of the
groupings of abstract ideas listed in the Guidance. Id. at 3.
Appellant’s arguments with respect to the categories of Prong One are
conclusory, and do not show the Examiner errs in determining the
limitations of claim 1 recite “certain methods of organizing human activity
because they are steps that manage interactions between people,” and
“[w]ith the exception of the steps being carried out using one or more
processors, the language of the claims encompasses steps that can be done
manually between a first user and one or more second users.” Ans. 5; see
Reply Br. 3, 4 (quoting various cases without explaining how they apply
under Prong One of the Guidance). Rather, we determine the Examiner has
properly analyzed the claim limitations with respect to the abstract idea
groupings under Prong One of the Guidance, as the Examiner has identified
the specific limitations in the claim that fall within the subject matter
groupings of abstract ideas enumerated in the Guidance. See Ans. 4, 5;
Memorandum, 84 Fed. Reg. at 54.
Claim 1 recites a “system for facilitating messaging for therapy
adherence,” and we agree with the Examiner that “[t]he current claims recite
presenting received responses to a user in a prioritized order based on the
influence of the sender.” Ans. 4. Claim 1 recites limitations [1], [2], [3],
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[4], [5], [6], [7], [8], which coordinate communications among various users
of a medical therapy system.3 We agree these limitations recite “[c]ertain
methods of organizing human activity,” such as “managing personal
behavior or relationships or interactions between people” that entail “social
activities, teaching, and following rules or instructions,” as well as “[m]ental
processes” that entail steps of “observation, evaluation, judgment, opinion.”
Memorandum, 84 Fed Reg. at 52; see BSG Tech LLC v. Buyseasons, Inc.,
899 F.3d 1281, 1286 (Fed. Cir. 2018) (“[T]he abstract idea of considering
historical usage information while inputting data.”); Evolutionary
Intelligence LLC v. Sprint Nextel Corp., 677 F. App’x 679, 680 (Fed. Cir.
2017) (Determining that claims “directed to selecting and sorting
information by user interest or subject matter” are abstract.). Thus, we are
not persuaded the Examiner’s analysis is in error.
Accordingly, we are not persuaded the Examiner errs in determining
the claims recite a judicial exception under Prong One of the Guidance. See
Memorandum, 84 Fed. Reg. 54.

B. Step 2A, Prong Two
Appellant argues the Examiner’s rejection is in error, as “the claims
integrate the alleged abstract idea into a practical application because the
claims recite the . . . specific means or method that ‘imposes a meaningful
limit on the [abstract idea], such that the claim is more than a drafting effort
designed to monopolize the [abstract idea].’” Reply Br. 5 (quoting “Revised

3 We note claim 1 recites “one or more processors configured by machine
readable instructions,” but this limitation is in the preamble and not recited
in any of limitations [1], [2], [3], [4], [5], [6], [7], or [8].
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Guidance at 18”). Particularly, Appellant contends “the claimed inventions
provide a technical solution to one or more problems of conventional
messaging and/or therapy adherence systems” because the claimed ranking
of user messages “reduces the negative impact of message inundation” and
“facilitates the increase of responses from greater influential users.” Id. at 4,
5.
We are not persuaded the Examiner’s rejection is in error under Prong
Two of Step 2A of the Guidance. See Ans. 6, 7; Update 12, 13. The
features relied on by Appellant (such as ranking users based on influence
factors) are part of the judicial exception discussed above in Prong One, and
do not comprise additional elements, individually or in combination, that
integrate the exception into a practical application. See Reply Br. 5, 6;
Memorandum, 84 Fed. Reg. at 54, 55. Claim 1 recites the additional
element of “one or more processors,” in addition to the limitations reciting
the judicial exception. This claimed “additional element merely recites the
words ‘apply it’ (or an equivalent) with the judicial exception, or merely
includes instructions to implement an abstract idea on a computer, or merely
uses a computer as a tool to perform an abstract idea.” Memorandum, 84
Fed. Reg. at 55; see also Ans. 6.
Even considered as additional elements, we disagree with Appellant’s
contentions that the disputed limitations remove claim 1 from the realm of
ineligible subject matter. See Appeal Br. 4–6. Claim 1 provides a system
for organizing users and messages from users, which can be used to
prioritize messages between users to encourage therapy adherence. See
Spec. 46. Rather than improving the underlying computer or other technical
systems, the system of claim 1 may yield benefits for the users receiving the
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messages.4 See Spec. 3, 4; Final Act. 26 (“This is not an improvement to a
technology or technical field but rather an improvement in the business
practice of sending messages to a user.”); see also Versata Dev. Grp., Inc. v.
SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) (Steps including
sorting were well-understood, routine, conventional activities that involve
the normal, basic functions of a computer.). Thus, we are unpersuaded the
Examiner errs in determining “the claims do not include additional elements
that are sufficient to amount to significantly more than the judicial
exception.” Ans. 6.
Appellant further argues the claimed specific manner of presenting
messages “does not monopolize such messaging and/or therapy adherence
systems.” Reply Br. 6. We are not persuaded of Examiner error, however.
Based on the record before us, we determine that the specificity of the
recited techniques is insufficient to establish patent eligibility. See Alice,
573 U.S. at 222, (quoting Parker v. Flook, 437 U.S. 584, 593 (1978)) (“In
holding that the process was patent ineligible, we rejected the argument that
‘implement[ing] a principle in some specific fashion’ will ‘automatically
fal[l] within the patentable subject matter of § 101.’”). Similarly, any
questions on monopolization—or preemption—in the instant case have been
resolved by the analysis herein and by the Examiner. See Two-Way Media
Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir.
2017) (“[W]here a patent’s claims are deemed only to disclose patent

4 We note that problems arising from a large volume of communication is
not confined to computer messaging; such problems may arise from, for
example, receiving too many phone calls or too much postal mail.
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ineligible subject matter under the Alice framework, as they are in this case,
preemption concerns are fully addressed and made moot”).
Accordingly, we determine claim 1 does not integrate the judicial
exception into a practical application. See Memorandum, 84 Fed. Reg. at
54. As the “claim recites a judicial exception and fails to integrate the
exception into a practical application” (id. at 51), “the claim is directed to
the . . . judicial exception” (id. at 54).

C. Step 2B
Appellant argues claim 1 is eligible pursuant to Step 2B of the
Guidance because “the inventive concept is not restricted to only the
additional elements.” Reply Br. 6. Appellant further contends the
“Examiner has continued to fail to provide any factual evidence that the
inventive concept (e.g., the specifically-recited manner via which a message
is presented) as a whole was well-understood, routine, and conventional.”
Id. at 7.
We are not persuaded the Examiner errs. First, Appellant contends
the inventive concept, under the eligibility analysis, includes the abstract
idea. Reply Br. 6. Regardless of the scope of a claim’s inventive concept,
Appellant’s arguments solely rely on the identified judicial exception for the
purported improvements. See Reply Br. 7; Update page 13 (“[I]t is
important to keep in mind that an improvement in the judicial exception
itself . . . is not an improvement in technology.”); Berkheimer v. HP, Inc.,
890 F.3d 1369, 1374 (Fed. Cir. 2018) (Moore, J., concurring) (“the
‘inventive concept’ cannot be the abstract idea itself”); see also BSG Tech
LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) (“It has been
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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.”) (internal
citation omitted). As discussed above, the specifically-recited manner of
claim 1 is part of the recited judicial exception; it does not comprise
“additional elements individually and in combination” that may “provide an
inventive concept” amounting to “significantly more than the exception
itself.” Memorandum, 84 Fed. Reg. at 55–56; see also id. at 55 n.24.
The additional elements of claim 1 (i.e., the one or more processors)
are “no more than mere instructions to apply the exception using a generic
computer component, which cannot provide an inventive concept” sufficient
to render the claims eligible. Ans. 6; see also Final Act. 29 (citing page 11
of the Specification); Spec. 11:1–25, 32:4–9; 46:22–31; Alice, 573 U.S. at
226 (“Nearly every computer will include a ‘communications controller’ and
‘data storage unit’ capable of performing the basic calculation, storage, and
transmission functions required by the method claims.”); I/P Engine, Inc. v.
AOL Inc., 576 F. App’x 982, 995 (Fed. Cir. 2014) (“[T]he clear advantages
of combining content-based and collaborative filtering were widely
recognized at the time of the claimed invention.”). Thus, we determine
independent claim 1’s claim elements, individually and as an ordered
combination, do not provide significantly more than the recited judicial
exception.
We are not persuaded the Examiner errs in determining independent
claim 1 is patent ineligible. Appellant does not separately argue the
remaining claims. Accordingly, we sustain the Examiner’s eligibility
rejection of claims 1–7, 13, 14, and 16–20. See Final Act. 5.
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Written Description
The Examiner finds dependent claims 3, 8, and 18 lack written
description support:
As per Claims 3 and 18, the claims recite “increasing the ranking
score of the second user”. However, there is not sufficient
support in the specification for the concept of increasing a
ranking score. . . .
As per Claim 7, the claim recites recite “decreasing the ranking
score of the second user”. However, there is not sufficient
support in the specification for the concept of decreasing a
ranking score.
Final Act. 6. In the Answer, the Examiner further states “[n]o algorithm is
disclosed or provided to explain a manner in which the ranking score is
increased or decreased, by how much one would increase or decrease the
ranking score based on the update of the ranking.” Ans. 7.
Appellant argues the Examiner errs, because “it is clear that the
Specification conveys with reasonable clarity to those skilled in the art that
Appellant was in possession of the claimed invention, including the
recitation of ‘increasing the ranking score of the second user’ and
‘decreasing a ranking score.’” Appeal Br. 19. Particularly, Appellant
contends the “Specification, for example, discloses . . . . the system updates
the ranking of the second users (based on whether the first user carried out
the therapeutic activity),” and “one skilled in the art would know that
updating ‘a ranking’ includes increasing the ranking score and/or decreasing
the ranking score.” Reply Br. 7, 8 (quoting Spec. 21:10–17, 22:30–32).
We are persuaded the Examiner’s written description rejection is in
error. An update to a ranking, such as described in the Specification,
necessarily results in the existing ranking being decreased or increased. See
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Spec. 21:30–32 (“[T]he system can check to see if the user reads the second
users’ messages, and can update the rankings.”) Thus, we agree with
Appellant that the Specification provides sufficient written description
support for the claimed increase or decrease of the ranking score. See
Appeal Br. 19.
Further, although the Examiner states that the Specification does not
provide an algorithm for increasing or decreasing the ranking (Ans. 7), the
Examiner does not explain why one of skill in the art would require such
step by step disclosure to understand the Appellant had possession (of the
idea of increasing or decreasing a number stored in a computer system).
Based on the record before us, we do not find such elaborate disclosure is
necessary to show possession of such an update. Rather, the Specification
discloses “the claimed function in sufficient detail that one of ordinary skill
in the art can reasonably conclude that the inventor possessed the claimed
subject matter at the time of filing.” Examining Computer-Implemented
Functional Claim Limitations for Compliance with 35 U.S.C. 112, 84 Fed.
Reg. 57, 61 (Jan. 7, 2019).
Accordingly, we do not sustain the Examiner’s written description
rejection of claims 3, 7, and 8.

Obviousness
Appellant argues the Examiner’s obviousness rejection is in error,
because “the cited references fail to teach or suggest at least the claim
features” of independent claim 1. Appeal Br. 20. Appellant argues “[t]here
is no description whatsoever in [Neystadt] of determining an influence factor
indicating influence of each one of the second users on the adherence of the
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first user to the activity,” as claimed. Reply Br. 8; see also Appeal Br. 21.
Appellant further argues Carter does not teach or suggest the claimed
“ranking the second users based on their influence factors,” or “sending a
message prompt to one or more second users of the second users, where the
message prompts are sent based on the ranking scores of the one or more
second users.” Appeal Br. 21 (emphasis omitted). Moreover, Appellant
contends Fradkin “does not describe sending a message prompt to one or
more second users of the second users based on the ranking scores of the one
or more second users satisfying a predetermined score threshold,” as
required by claim 1. Reply Br. 9 (emphasis omitted); see also Appeal Br.
22.
Appellant’s arguments against the individual references fail to show
the Examiner errs in finding the combined teachings of the references would
have suggested the limitations of claim 1. See In re Keller, 642 F.2d 413,
425 (CCPA 1981) (“The test for obviousness is not . . . that the claimed
invention must be expressly suggested in any one or all of the references.
Rather, the test is what the combined teachings of the references would have
suggested to those of ordinary skill in the art.”). Thus, we are not persuaded
the Examiner errs in finding claim 1 to be obvious in view of the
combination of cited references. See Ans. 7–9.
We adopt as our own the findings and reasons set forth by the
Examiner. For example, the Examiner finds, and Appellant does not
challenge, that Hegeman teaches a social network for medical adherence
support, including sending messages of encouragement based on prompting.
See Ans. 7, 8; Hegeman ¶ 49 (“[A]n announcement [may] be transmitted to
the one or more other users,” and [t]he one or more other users may
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thereafter, depending on the patient's response or responses to the query,
send the patient messages reinforcing compliance with the patient's
schedule.”). The Examiner finds Neystadt and Carter teach ranking content
and users based on the users’ influence. See Ans. 8; Neystadt ¶ 43 (“The
combination of a person’s general influence coupled with the user’s trust in
the person may result in an influence factor from which the people in the
social network may be ranked or arranged.”); Carter ¶ 12 (“The relevancy is
based on a strength factor derived at least in part on monitored relationship
interactions between the user and the content producer,” and “[w]hen being
presented, the digital media content having a greater relevancy weight
receives a higher priority than other digital media content available to the
user from the plurality of content producers.”). The Examiner additionally
finds the claimed prompting is taught by Fradkin and Schuster. See Final
Act. 13; Fradkin ¶¶ 3–5 (discussing prompting users to communicate with
each other based on shared interests); Schuster5 ¶ 131 (“Secondary
supporters can be contacted to provide an additional level of peer pressure to
help motivate patient adherence” if the “primary supporter [is] not
responding the reminder service.”).

5 We note Appellant does not challenge the Examiner’s reliance on Schuster.
See Appeal Br. 20–22; Final Act. 13 (“[S]econdary supporter, not as
important or influential as a primary supporter, is not contacted unless the
primary supporter is not responding to the reminder service.”). Accordingly,
Appellant has waived any challenge to these aspects of the rejection. See Ex
parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential); Hyatt v.
Dudas, 551 F.3d 1307, 1313–14 (Fed. Cir. 2008) (The Board may treat
arguments Appellant failed to make for a given ground of rejection as
waived).
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We further find reasonable, and Appellant does not challenge, the
Examiner’s rationale for combining the cited references. See Final Act. 8–
14; Ans. 7–9; Appeal Br. 20–22. Accordingly, we do not find the Examiner
erred in finding claim 1 to be obvious in view of the combined teachings of
Hegeman, Carter, Neystadt, Fradkin, and Schuster. Appellant does not
present separate substantive arguments for the remaining claims. See App.
Br. 20–22. Thus, we sustain the Examiner’s obviousness rejection of claims
1–7, 13, 14, and 16–20.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Basis/Reference(s) Affirmed Reversed
1–7, 13, 14,
16–20
101 Eligibility 1–7, 13,
14, 16–20

3, 7, 18 112(a) Written
Description
3, 7, 18
1, 3–7, 14,
16, 18–20
103 Hegeman, Carter,
Neystadt, Fradkin,
Schuster
1, 3–7, 14,
16, 18–20

2, 13, 17 103 Hegeman, Carter,
Neystadt, Fradkin,
Schuster, Horvitz
2, 13, 17
Overall
Outcome
1–7, 13,
14, 16–20

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TIME PERIOD FOR RESPONSE
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