KONINKLIJKE PHILIPS N.V.

Patent Trials and Appeals Board

Jan 3, 2020

14308842 - (D) (P.T.A.B. Jan. 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.
14/308,842 06/19/2014 Michael Chun-chieh Lee 2012P02064US01 1027
24737 7590 01/03/2020
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus Avenue
Suite 340
Valhalla, NY 10595
EXAMINER
LOFTIS, JOHNNA RONEE
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
01/03/2020 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 MICHAEL CHUN-CHIEH LEE
____________

Appeal 2019-001114
Application 14/308,842
Technology Center 3600
____________

Before ANTON W. FETTING , BRADLEY B. BAYAT, and
TARA L. HUTCHINGS, Administrative Patent Judges.

HUTCHINGS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 2, and 4–29. We have jurisdiction under 35 U.S.C.
§ 6(b).

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Our decision references Appellant’s Appeal Brief (“Appeal Br.,”
filed June 19, 2018) and Reply Brief (“Reply Br.,” filed Nov. 21, 2018), and
the Examiner’s Answer (“Ans.,” mailed Oct. 1, 2018), Advisory Action
(“Adv. Act.,” mailed Apr. 16, 2018), and Final Office Action (“Final Act.,”
mailed Feb. 5, 2018). Appellant identifies Koninklijke Philips N.V.as the
real party in interest. Appeal Br. 2.

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We AFFIRM.
CLAIMED INVENTION
The Appellants’ claimed invention “generally relates to scheduling
imaging examinations of subjects based on estimated imaging examination
time duration for predicted and/or actual imaging protocols corresponding to
the imaging examinations.” Spec. 1.
Claims 1, 15, and 25 are the independent claims on appeal. Claim 26,
reproduced below with bracketed notations added, is illustrative of the
claimed subject matter:
26. A nontransitory computer readable storage medium
encoded with computer readable instructions, which, when
executed by a processor, causes the processor to:
[(a)] receive a set of imaging examination orders, wherein
at least one imaging examination order of the set of imaging
examination orders excludes a protocol and includes an anatomy
of interest and at least one imaging modality;
[(b)] determine a protocol of each of the imaging
examination orders in the set of imaging examination orders
including the at least one imaging examination order that
excludes a protocol and includes an anatomy of interest and at
least one imaging modality, wherein the protocol of each
imaging examination order is determined based on information
extracted from each imaging examination order;
[(c)] identify an expected examination time duration for
each of the determined protocols; and
[(d)] create the electronically formatted schedule based on
the identified expected examination time durations.

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REJECTION2
Claims 1, 2, and 4–29 are rejected under 35 U.S.C. § 101 as directed
to a judicial exception without significantly more.

ANALYSIS
Patent-Ineligible Subject Matter
Appellant argues the pending claims as a group. Appeal Br. 5–9. We
select independent claim 26 as representative. The remaining claims stand
or fall with claim 26. See 37 C.F.R. §41.37(c)(1)(iv).
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S.
208, 216 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth 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 Corp., 573 U.S. at 217.
The first step in that analysis is to “determine whether the claims at issue are
directed to one of those patent-ineligible concepts.” Id. If the claims are not
directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry
ends. Otherwise, the inquiry proceeds to the second step where the elements

2 In the Advisory Action, the Examiner withdrew the rejection of claims 28
and 29 under 35 U.S.C. § 112(a). Adv. Act. 2.
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of the claims are considered “individually and ‘as an ordered combination’”
to determine whether there are additional elements that “‘transform the
nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo,
566 U.S. at 79, 78). This is “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.’” Id. at 217–18 (alteration in original).
In rejecting the pending claims under 35 U.S.C. § 101, the Examiner
determined that the claims recited a series of mental steps, i.e., a mental
process, which is an abstract idea. See Ans. 3–4. The Examiner further
determined that the claims do not include additional elements that are
sufficient to amount to significantly more than the judicial exception. See
id. at 4, 6.
The U.S. Patent and Trademark Office (the “USPTO”) published
revised guidance on January 7, 2019 for use by USPTO personnel in
evaluating subject matter eligibility under 35 U.S.C. § 101. That guidance
“extracts and synthesizes key concepts identified by the courts as abstract
ideas to explain that the abstract idea exception includes” the following three
groupings: (1) mathematical concepts; (2) certain methods of organizing
human activity, e.g., fundamental economic principles or practices,
commercial or legal interactions; and (3) mental processes. 2019 REVISED
PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50, 52
(Jan. 7, 2019) (the “Revised Guidance”).
Under the Revised Guidance, in determining whether a claim is
patent-eligible, we first look to whether the claim recites a judicial
exception, including one of the enumerated groupings of abstract ideas
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(“Step 2A, Prong One”). Id. at 54. If so, we next consider whether the
claim includes additional elements, beyond the judicial exception, “that
integrate the [judicial] exception into a practical application,” i.e., 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. (“Step 2A, Prong Two”). Id.
at 54–55.
Only if the claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application do we then look to
whether the claim “[a]dds a specific limitation or combination of
limitations” that is not “well-understood, routine, conventional activity in the
field” or simply “appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception” (“Step 2B”). Id. at 56.
Step One of the Mayo/Alice Framework (Revised Guidance, Step 2A,
Prong 1)
Appellants’ Specification describes inefficiencies in the known
manner in which imaging examinations, such as magnetic resonance
imaging (MRI), computed tomography (CT), and x-ray, are scheduled.
Spec. 1. Current methodologies include a radiology department receiving an
order for an imaging examination that does not specify a protocol providing
the technical detail for conducting the specific examination. Id. Upon
receiving the order, a scheduler allocates a date and a block of time for an
imaging examination using a general time block for the order. Id. When a
protocol is received shortly before the exam, the protocol could be time-
intensive, requiring more time than allocated by the scheduler, or the
opposite, requiring less time than allocated.
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For example, a scheduler at a radiology deparment allocates a one
hour general block of time in response to an order for an “MRI of the brain.”
Id. However, at a subsequent date and time the examination is assigned a
brain tumor protocol that uses diffusion imaging and requires more time to
perform than the one hour slot allocated by the scheduler. See id. In this
example, the examination is deleted or canceled. See id. In another
example, the assigned protocol for the order for an “MRI of the brain” is an
adult brain screen. Id. In this example, the examination requires less time
than the time allotted, resulting in underutilization of the imaging system.
To remedy this problem, claim 26 recites a computer readable storage
medium encoded with computer readable instructions that, when executed
by a processor, causes a processor to perform a sequence of steps to create a
schedule. The steps include:
[(a)] receive a set of imaging examination orders, wherein
at least one imaging examination order of the set of imaging
examination orders excludes a protocol and includes an anatomy
of interest and at least one imaging modality;
[(b)] determine a protocol of each of the imaging
examination orders in the set of imaging examination orders
including the at least one imaging examination order that
excludes a protocol and includes an anatomy of interest and at
least one imaging modality, wherein the protocol of each
imaging examination order is determined based on information
extracted from each imaging examination order;
[(c)] identify an expected examination time duration for
each of the determined protocols; and
[(d)] create the . . . schedule based on the identified
expected examination time durations.
These limitations, when given their broadest reasonable interpretation, recite
steps for creating a schedule for imaging examinations after receiving a set
of imaging examination orders. Although claim 26 recites that the steps are
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performed by a “processor” executing “computer readable instructions”
encoded on a “computer readable storage medium,” the underlying steps
recited in the claim are all acts that, as the Examiner observes (see Ans. 3–
4), could be performed by a human mentally or manually, using pen and
paper, without the use of a computer or any other machine. For example, a
person could receive a set of imaging examination orders that include an
anatomy of interest and at least one imaging modality and determine a
protocol of each of the examination orders. By performing calculations in
his or her head or using pen and paper, the user could identify an expected
examination time duration for each of the protocols, and create a schedule
based on the identified expected examination time duration. Simply put,
claim 26 recites a concept, including an evaluation or judgment, that can be
performed in the human mind, which is a mental process and, therefore, an
abstract idea. See Revised Guidance, 84 Fed. Reg. at 52. See also
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir.
2011) (holding that method steps that can be performed in the human mind,
or by a human using a pen and paper, are unpatentable mental processes).
Step One of the Mayo/Alice Framework (Revised Guidance, Step 2A,
Prong 2)
Having concluded that claim 26 recites a judicial exception, i.e., an
abstract idea (Step 2A, Prong One), we next consider whether the claim
recites “additional elements that integrate the exception into a practical
application” (Step 2A, Prong Two).
Beyond the abstract idea, claim 26 additionally recites an
“electronically formatted” schedule, that the claimed steps are performed by
a “processor” executing “computer readable instructions” encoded in a “non-
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transitory computer readable storage medium.” Appellant ostensibly
maintains that claim 26 is not directed to an abstract idea due to these
additional elements. For example, Appellant argues that claim 26 “must be
construed as requiring a computer to perform the recited steps,” rather than
as a mental process, because it “require[s] the use of processors, and/or
computer readable storage medium having computer readable insructions
embodied therewith.” Appeal Br. 7. Likewise, Appellant contends that “the
claims require creating an electronically formatted schedule, which cannot
be performed by a human without the use of a computer.” Reply Br. 4.
Yet, to the extent Appellant maintains that claim 26 is patent eligible
because the claim recites the use of a computer, we note that the Court in
Alice expressly rejected a substantially similar argument. The claims in
Alice “require[d] the use of a computer to create electronic records, track
multiple transactions, and issue simultaneous instructions; in other words,
‘[t]he computer [was] itself the intermediary.”’ Alice Corp., 573 U.S. at
224. Yet, the Court held that the use of a computer did not rendor the claims
patent eligible. See id. at 223 (“the mere recitation of a generic computer
cannot transform a patent-ineligible abstract idea into a patent-eligible
invention”).
Here, Appellant’s claim 26 recites a “processor” and “computer
readable storage medium” and requires creating an “electronically
formatted” schedule. But these elements are described in the Specification
at a high level of generality, i.e., as generic computer components. See, e.g.,
Spec. 2–3. Further, claim 26 recites that the claimed processor and storage
medium are used in their ordinary capacity for performing basic computer
functions, such as, in the case of the computer readable storage medium,
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storing computer readable instructions, and in the case of the processor,
receiving and processing information. Appellant does not adequately
explain how or why the claimed steps are such that they cannot be
performed manually or such that they are not routine and conventional
functions of a generic computer.
We find no indication in the Specification, nor does Appellant direct
us to any indication, that these additional elements implement the abstract
idea with a 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. And “after Alice, there can remain no doubt:
recitation of generic computer limitations does not make an otherwise
ineligible claim patent-eligible.” DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245, 1256 (Fed. Cir. 2014).
We also 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 technology and/or a technical field 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.3

3 The Revised Guidance references MPEP § 2106.05(a)–(c) and (e) in
describing the considerations that are indicative that an additional element or
combination of elements integrates the judicial exception, e.g., the abstract
idea, into a practical application. Revised Guidance, 84 Fed. Reg. at 55. If
the recited judicial exception is integrated into a practical application, as
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Appellant asserts that claim 26 “provide[s] an improvement to the
field of scheduling imaging examinations of subjects.” Appeal Br. 7.
However, we are not persuaded that improving the scheduling of imaging
examinations is an improvement to technology or a technical field, as
opposed to an improvement to a mental process that is itself the abstract
idea.
And, Appellant contends that improvements in computer technology
are not limited to the operation of a computer or a computer network per se
but also can include a set of rules, similar to the claims held patent eligible
in McRO, Inc. v. Bandai Namco Games America, Inc., 837 F.3d 1299
(Fed. Cir. 2016). Appeal Br. 8. In McRO, the improvement in computer
animation was realized by using “rules, rather than artists [i.e., human
animators], to set the morph weights and transitions between phonemes” (id.
at 1313), i.e., in McRO, the invention used “rules to automatically set a
keyframe at the correct point to depict more realistic speech, achieving
results similar to those previously achieved manually by animators.” Id. at
1307. The rules in McRO, thus, allowed the computer to produce accurate
and realistic synchronization in animated characters that previously could
only be produced by humans.
Here, claim 26 does not recite a specific set of rules that result in an
improvement to technology analogous to the claims in McRO. Instead,
claim 26 recites results-based rules for each of limitations (a) through (d),
without providing sufficient technological details for how to achieve the
desired results. See Intellectual Ventures I LLC v. Capital One Fin. Corp.,

determined under one or more of these MPEP sections, the claim is not
“directed to” the judicial exception.
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850 F.3d 1332, 1342 (Fed. Cir. 2017) (explaining that “[o]ur law demands
more” than claim language that “provides only a result-oriented solution,
with insufficient detail for how a computer accomplishes it”). For example,
limitation (b) recites “determining a protocol of each of the imaging
examination orders in the set of imaging examination orders . . . based on
information extracted from each imaging examination order.” No particular
manner for determining the protocol is recited in claim 26 that would
indicate any improvement in technology. Further, Appellant does not
identify, and we do not find, any portion of the Specification that describes a
particular manner of determining a protocol or otherwise indicates an
improvement to technology. The same holds true for the other recited
limitations.
We do not see any parallel between the rules described in McRO that
result in an improvement to technology in 3-D animation technniques, and
the result-based, functional limitations recited in Appellant’s claim 26.
Claim 26 may well result in an improvement in process for scheduling
imaging examinations (i.e., a mental process that is the abstract idea itself).
However, we are not persuaded that the additional limitations in Appellant’s
claim 26 do more than implement the abstract idea on a generic computer.
Finally, we are not persuaded of Examiner error by Appellant’s
argument regarding preemption. Appeal Br. 8–9. There is no dispute that
the Supreme Court has described “the concern that drives [the exclusion of
abstract ideas from patent-eligible subject matter] as one of pre-emption.”
Alice Corp., 573 U.S. at 216. Yet, as Appellant, in fact, acknowledges (see
Reply Br. 11–12), characterizing preemption as a driving concern for patent
eligibility is not the same as characterizing preemption as the sole test for
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patent eligibility. “The Supreme Court has made clear that the principle of
preemption is the basis for the judicial exceptions to patentability” and “[f]or
this reason, questions on preemption are inherent in and resolved by the
§ 101 analysis.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1379 (Fed. Cir. 2015) (citing Alice Corp., 573 U.S. at 216). “[P]reemption
may signal patent ineligible subject matter [but] the absence of complete
preemption does not demonstrate patent eligibility.” Id.
We find nothing of record, short of attorney argument, that attributes
an improvement in technology and/or a technical field 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 Revised Guidance, 84 Fed. Reg. at 55. At best, the
additional elements recited in claim 26, considered individually and as an
ordered combination, do no more than generally link the use of the abstract
idea to a particular technological environment or field of use involving an
electronically formatted schedule.
Inventive Concept: Step Two of the Mayo/Alice Framework; Step 2B of the
Revised Guidance
Having determined under step one of the Mayo/Alice framework that
claim 26 is directed to an abstract idea, we next consider under Step 2B of
the 2019 Revised Guidance, the second step of the Mayo/Alice framework,
whether claim 26 includes additional elements or a combination of elements
that provides an “inventive concept,” i.e., whether the additional elements
amount to “significantly more” than the judicial exception itself. Revised
Guidance, 84 Fed. Reg. at 56.
As described above, that the only claim elements beyond the abstract
idea are the claimed “processor” that executes “computer readable
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instructions” encoded in a “non-transitory computer readable storage
medium,” and the “electronically formatted” schedule. However, these are
not more than generic computer components. Appellant cannot reasonably
contend, nor does Appellant, that there is a genuine issue of material fact
regarding whether the operation of these components is well-understood,
routine, or conventional, where, as here, there is nothing in the Specification
to indicate that the operations recited in claim 26 require any specialized
hardware or inventive computer components or that the claimed invention is
implemented using other than generic computer components to perform
generic computer functions, e.g., receiving and processing information.
Indeed, the Federal Circuit, in accordance with Alice, has “repeatedly
recognized the absence of a genuine dispute as to eligibility” where claims
have been defended as involving an inventive concept based “merely on the
idea of using existing computers or the Internet to carry out conventional
processes, with no alteration of computer functionality.” Berkheimer, 890
F.3d at 1373 (Moore, J., concurring) (internal citations omitted); see also
BSG Tech, 899 F.3d at 1291 (“BSG Tech does not argue that other, non-
abstract features of the claimed inventions, alone or in combination, are not
well-understood, routine and conventional database structures and activities.
Accordingly, the district court did not err in determining that the asserted
claims lack an inventive concept.”).
Appellant asserts that the limitations recited in claim 26, considered as
an ordered combination, create an electronically formatted schedule. See
Appeal Br. 8–9. Appellant contends that the claimed subject matter is not
well-understood, routine, or conventional in the field of scheduling imaging
ecaminations. Id. at 9. And, Appellant argues that the claim “integrate[s]
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specifically-claimed rules . . . into ‘something more.’” Id. Yet, the
limitations identified by Appellant, even if novel and non-obvious, recite no
elements beyond the abstract idea. Although the second step in the
Mayo/Alice framework is termed a search for an “inventive concept,” the
analysis is not an evaluation of novelty or non-obviousness, but rather, a
search for “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., 573 U.S. at 217–18
(alteration in original). A novel and non-obvious claim directed to a purely
abstract idea is, nonetheless, patent-ineligible. See Mayo, 566 U.S. at 90.
Here, Appellants have not identified, and we do not find, any
additional elements recited in claim 26 that, individually or in combination,
provide significantly more than the abstract idea. Instead, the additional
elements recite generic computer elements for executing the abstract idea.
We are not persuaded, on the present record, that the Examiner erred
in rejecting independent claim 26 under 35 U.S.C. § 101. Therefore, we
sustain the Examiner’s rejection of claim 26, and claims 2–25 and 27–29,
which fall with claim 26.

CONCLUSION
In summary:
Claims
Rejected 35 U.S.C. §  Basis Affirmed Reversed
1, 2, 4–29 101  Eligibility 1, 2, 4–29

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37
C.F.R. § 1.136(a)(1)(iv).

AFFIRMED