American Registry for Diagnostic Medical Sonography, Inc.

Patent Trials and Appeals Board

Sep 29, 2020

14490442 - (D) (P.T.A.B. Sep. 29, 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.
14/490,442 09/18/2014 Ellen Ruth JULIAN 3012.0520001 5302
26111 7590 09/29/2020
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
1100 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005
EXAMINER
TOMASZEWSKI, MICHAEL
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
09/29/2020 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):
e-office@sternekessler.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ELLEN RUTH JULIAN, JOHN EDWARD GOCKE,
ELIZABETH WARD LANGSTON, PATRICIA LUCAS GRIER, and
DALE RONALD CYR

Appeal 2019-002852
Application 14/490,442
Technology Center 3600
____________

Before BRUCE T. WIEDER, TARA L. HUTCHINGS, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

SILVERMAN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision rejecting claims 7 and 9–20. 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. The Appellant identifies the real party in interest as
Inteleos, Inc., an entity previously named American Registry for Diagnostic
Medical Sonography, Inc. Appeal Br. 4.
Appeal 2019-002852
Application 14/490,442
2
ILLUSTRATIVE CLAIM
7. A system for assessing competency of a health-care
professional, comprising:
a virtual console configured to present an assessment
scenario to the health-care professional, the virtual console
including:
an image section having a plurality of digital
images based on a simulated patient,
an enlarged digital image, wherein the enlarged
digital image is one of the plurality of digital images
selected by the health-care professional, and
a response prompt portion configured to
dynamically display one or more questions related to the
enlarged digital image, wherein the one or more
questions are directed to critical points for performing a
medical diagnosis of the simulated patient; and
an assessment tool associated with the virtual console,
wherein the assessment tool is configured to perform an
assessment of the health-care professional’s medical diagnosis
of the simulated patient using responses to the one or more
questions,
wherein the virtual console further includes a case
summary portion, and wherein a difficulty of the assessment
scenario is adjusted by altering information provided in the case
summary portion.
REFERENCES
Name Reference Date
Thorne et al.
(“Thorne” herein)
US 2009/0204426 A1 Aug. 13, 2009
Cyr et al. (“Cyr” herein) US 8,449,301 B2 May 28, 2013
Jakobovits US 8,520,978 B2 Aug. 27, 2013
James B. McGee, Virtual Patient Platforms, Patient Safety & Quality
Healthcare, June 11, 2009, http://www.psqh.com/virtual-patient-platforms
(“McGee” herein)

Appeal 2019-002852
Application 14/490,442
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REJECTIONS
I. Claims 7 and 9–20 are rejected under 35 U.S.C. § 101 as
ineligible subject matter.
II. Claims 7 and 9–20 are rejected under 35 U.S.C. § 103 as
unpatentable over Cyr, Jakobovits, Thorne, and McGee.
FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.
ANALYSIS
Subject-Matter Eligibility
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. Yet, subject matter belonging to any of the statutory
categories may, nevertheless, be ineligible for patenting. The Supreme
Court has interpreted § 101 to exclude laws of nature, natural phenomena,
and abstract ideas, because they are regarded as the basic tools of scientific
and technological work, such that including them within the domain of
patent protection would risk inhibiting future innovation premised upon
them. Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 589 (2013).
Of course, “[a]t some level, ‘all inventions . . . embody, use, reflect,
rest upon, or apply’” these basic tools of scientific and technological work.
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014). Accordingly,
evaluating ineligible subject matter, under these judicial exclusions, involves
a two-step framework for “distinguish[ing] between patents that claim the
buildin[g] block[s] of human ingenuity and those that integrate the building
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blocks into something more, thereby transform[ing] them into a patent-
eligible invention.” Id. (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 88–89 (2012) (internal quotation marks omitted)).
The first step determines whether the claim is directed to judicially excluded
subject matter (such as a so-called “abstract idea”); the second step
determines whether there are any “additional elements” recited in the claim
that (either individually or as an “ordered combination”) amount to
“significantly more” than the identified judicially excepted subject matter
itself. Id. at 217–18.
In 2019, the USPTO published revised guidance on the application of
§ 101, in accordance with judicial precedent. See 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 52 (Jan. 7, 2019)
(“2019 Revised Guidance”). Under the 2019 Revised Guidance, a claim is
“directed to” an abstract idea, only if the claim recites any of (1)
mathematical concepts, (2) certain methods of organizing human activity,
and (3) mental processes—without integrating such abstract idea into a
“practical application,” i.e., without “apply[ing], rely[ing] on, or us[ing] 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.” Id. at 52–55. The considerations
articulated in MPEP § 2106.05(a)–(c) and (e)–(h) bear upon whether a claim
element (or combination of elements) integrates an abstract idea into a
practical application. Id. at 55. A claim that is “directed to” an abstract idea
constitutes ineligible subject matter, unless the claim recites an additional
element (or combination of elements) amounting to significantly more than
the abstract idea. Id. at 56.
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Although created “[i]n accordance with judicial precedent” (id. at 52),
the 2019 Revised Guidance enumerates the analytical steps differently than
the Supreme Court’s Alice opinion. Step 1 of the 2019 Revised Guidance
addresses whether the claimed subject matter falls within any of the statutory
categories of § 101. Id. at 53–54. Step 2A, Prong One, concerns whether
the claim at issue recites ineligible subject matter and, if an abstract idea is
recited; Step 2A, Prong Two, addresses whether the recited abstract idea is
integrated into a practical application. Id. at 54–55. Unless such integration
exists, the analysis proceeds to Step 2B, in order to determine whether any
additional element (or combination of elements) amounts to significantly
more than the identified abstract idea. Id. at 56.
As to Step 1 of the 2019 Revised Guidance, the Examiner does not
determine that the subject matter of any claim might be outside a statutory
category stated in § 101.
Rather, with regard to the inquiries corresponding to Step 2A, Prong
One, the Examiner refers to the following paraphrased description of the
language of independent claim 7:
[S]ystems and methods for assessing competency of a health-
care professional by presenting a health-care professional with
an assessment scenario including a plurality of digital images
based on a simulated patient; displaying one or more questions
related to the images; performing an assessment of the health-
care professional’s medical diagnosis of the simulated patient
using responses [to] the one or more questions; and wherein a
difficulty of the assessment scenario is adjusted by altering
information in a case summary portion.
Final 2–3.
The Examiner likens the referenced limitations of claim 7 to claims
that the Federal Circuit addressed in Electric Power Group, LLC v. Alstom,
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Application 14/490,442
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S.A., 830 F.3d 1350, 1353–54. (Fed. Cir. 2016), which recited the broad
concept of collecting information, analyzing it, and displaying certain results
of the collection and analysis. Final 3. The Examiner also states that “the
claimed invention could be performed using pen and paper and/or in the
human mind.” Id. at 21. See also Answer 8. Viewed through the prism of
the 2019 Revised Guidance, the Examiner would regard the identified claim
language as reciting a “mental process” type of abstract idea.
Disputing the Examiner’s determination, the Appellant argues that
“the claimed subject matter [of claim 7] cannot be performed mentally and is
not analogous to human mental work.” Appeal Br. 20. Indeed, the
Examiner does not adequately explain — and we do not understand — how
the referenced claim 7 limitations of at least “present[ing] an assessment
scenario” including “a plurality of digital images based on a simulated
patient,” “dynamically display[ing] one or more questions related to [an]
enlarged digital image,” and “wherein a difficulty of the assessment scenario
is adjusted by altering information provided in the case summary portion”
may be characterized as mental processes — i.e., that they could be
practically “performed in the human mind, or by a human using a pen and
paper.” CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372
(Fed. Cir. 2011). See also 2019 Revised Guidance, 84 Fed. Reg. at 52.
Accordingly, we are persuaded that the Examiner erroneously characterizes
the identified limitations of claim 7 as reciting a mental-process type of
abstract idea.
In addition, the Appellant points out that “the [Final] Office Action
did not address an abstract idea at all with respect to independent claims 9
and 17, which contain different features from” independent claim 7. Appeal
Br. 13. For example, independent claim 9 recites:
Appeal 2019-002852
Application 14/490,442
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display a corrective instruction to the health-care
professional after receiving a response to a critical question,
wherein the corrective instruction provides progressive
feedback and indicates a correct course of action, and wherein a
subsequent decision point, a subsequent digital image, and a
subsequent question follow a linear progression from the
corrective instruction to provide a common set of data points to
assess the health-care professional.
Similar limitations appear in independent claim 17. Yet, independent claim
7 does not recite corresponding features. Accordingly, the Appellant
persuades us that the Examiner did not adequately demonstrate why
independent claims 9 and 17 might be regarded as reciting a judicial
exception.
In view of the foregoing, we are persuaded of error in the Examiner’s
analyses corresponding to Step 2A, Prong One, of the 2019 Revised
Guidance, as to independent claims 7, 9, and 17. Accordingly, without
addressing Step 2A, Prong Two, or Step 2B of the 2019 Revised Guidance,
we will not sustain the rejection of independent claims 7, 9, and 17, and
associated dependent claims 10–16 and 18–20, under 35 U.S.C. § 101.
Obviousness
Independent Claim 7
The Appellant argues that claim 7 stands rejected erroneously,
because the cited prior art references do not teach or suggest the claimed
“virtual console” having a “case summary portion” and “wherein a difficulty
of the assessment scenario is adjusted by altering information provided in
the case summary portion.” Appeal Br. 33.
First, according to the Appellant, Jakobovits does not teach the
claimed “case summary,” because the reference only shows “all case text,”
which “is not the same as showing a case summary.” Id.
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The Examiner finds that Jakobovits satisfies the “case summary”
limitation, in the disclosure of, e.g., Figure 6, which shows a screen interface
tab entitled “FINDINGS” and providing descriptions of medical images.
See Answer 12.2
The Appellant construes the claimed “case summary” as a subset of
some larger set of materials. However, the assessment system of claim 7
recites a “simulated patient” — not an actual patient — so there is no set of
medical information from which the claimed “case summary” can be drawn.
Indeed, the Specification characterizes the information associated with the
assessment exercise as a “simulated case file.” Spec. ¶ 18. Rather than
actually being a “summary” of some larger set of information, the relevant
features of the claimed “case summary” relate to its role in the claimed
“assessment scenario.” As described in the Specification, for example:
Case summary 320 can be a concise description of the patient,
providing both relevant and irrelevant information. Case
summary 320 can be a vignette or a narrative, which describes a
current status of the patient. As a health-care professional
progresses through a simulation, case summary 320 can include
additional information relevant to the status of the patient. In
embodiments, case summary 320 can be used to adjust the
difficulty of the assessment through the inclusion or omission
of relevant and irrelevant patient information.
Spec. ¶ 35. See also id. ¶ 20 (“Case summary 120 can be a concise
description of the patient, providing both relevant and irrelevant
information.”)

2 The Examiner mistakenly refers to the tab as a “CASE” tab, but no tab is
so identified in Figure 6 of Jakobovits. However, Jakobovits (col. 4, l. 20)
describes Figure 6 as illustrating a “medical case viewer.”
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The “FINDINGS” tab shown in Figure 6 of Jakobovits provides a
description of associated medical images. The Appellant has not provided
any reason why the provided content would not be adequate to perform the
role of the claimed “case summary” in claim 1. Furthermore, even under the
Appellant’s construction, Jakobovits’ “FINDINGS” tab would meet the
“case summary” limitation, because it is presented as a subset of a larger set
of information, represented by tabs named, e.g., “HISTORY” and
“DIAGNOSIS.”
Accordingly, we are not persuaded of error in the rejection of
independent claim 7, based upon the Appellant’s argument that the cited
prior art references do not teach or suggest the claimed “virtual console”
having a “case summary portion” and “wherein a difficulty of the
assessment scenario is adjusted by altering information provided in the case
summary portion.”
The Appellant also argues that claim 7 stands rejected erroneously,
because the cited prior art does not teach or suggest the recitation of “a
difficulty of the assessment scenario is adjusted by altering information
provided in the case summary portion.” Appeal Br. 33.
The Examiner relies upon McGee3 for this limitation. Final 7. See
also Answer 12. The relevant portion of McGee states:
Based on the responses received, future questions are generated
specific to the demonstrated skill level of the user, becoming
more complex if the appropriate course of treatment is selected
or more remedial if mistakes are made.
McGee 2. According to the Examiner:

3 We note that the Examiner cites pages 2 and 6–9 of McGee. Final 7. Yet,
the identified McGee reference contains only five pages.
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[I]t is submitted that it is inherent that the difficulty of an
assessment scenario is adjusted by altering information in the
case summary. For example, an assessment scenario can be
made more difficult by leaving out information or adding
information to make a scenario more complicated (i.e., altering
information).
Final 23.
The Appellant does not address the Examiner’s argument squarely.
Instead, the Appellant argues that Jakobovits “says nothing about altering
the text” (even though the Examiner does not rely on Jakobovits for the
limitation at issue) and briefly states that the other references (including
McGee) do not “cure the[ ] deficiencies of Jakobovits.” Appeal Br. 33.
The Appellant’s argument is not sufficient to identify error in the
rejection of claim 7. In view of McGee’s teaching of increasing the
difficulty of assessment questions and — in view of the small and finite
number of elements associated with a question — the claimed “altering
information provided in the case summary portion” (the “case summary”
taught by Jakobovits, as addressed above), would have been obvious to a
person of skill in the art at the relevant time. As the Supreme Court has
explained:
When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this
leads to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense. In that
instance the fact that a combination was obvious to try might
show that it was obvious under § 103.
KSR Int’l Co. v. Teleflex Co., 550 U.S. 398, 421 (2007).
In view of the foregoing, we sustain the rejection of independent
claim 7 under 35 U.S.C. § 103.
Appeal 2019-002852
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Independent Claims 9 and 17
and Dependent Claims 10–16 and 18–20
Independent claim 9 stands rejected as obvious over Cyr, Jakobovits,
Thorne, and McGee. Final 7–10.
Disputing the rejection of claim 9, the Appellant contends that the
cited prior art does not teach or suggest that the recited “virtual console”
“display a corrective instruction,” “wherein the corrective instruction
provides progressive feedback and indicates a correct course of action, and
wherein a subsequent decision point, a subsequent digital image, and a
subsequent question follow a linear progression from the corrective
instruction to provide a common set of data points to assess the health-care
professional.” See Appeal Br. 29–32.
The Appellant concedes that Jakobovits teaches the claimed
“corrective instruction” that “provides progressive feedback and indicates a
correct course of action.” Id. at 30–31 (citing Jakobovits Abstract, col. 28,
ll. 12–26, col. 29, ll. 5–9, col. 29, l. 63 – col. 30, l. 2). However, the
Appellant argues: “Jakobovits appears to be silent as to what subsequent
questions in the quiz are based on. Consequentially, Jakobovits cannot be
reasonably interpreted to teach or suggest the above-noted claim features.”
Id. at 31.
The Appellant does not challenge (albeit, stating that the “Applicant
does not concede”) that McGee teaches the claimed “decision point.” Id.
The Appellant proceeds to argue that McGee fails to teach or suggest
the remainder of the limitation: “a subsequent decision point, a subsequent
digital image, and a subsequent question follow a linear progression from
the corrective instruction to provide a common set of data points to assess
the health-care professional.” See id. at 31–32. According to the Appellant,
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McGee discloses only a “branched narrative,” in which the answers given by
the health-care professional can follow multiple diagnostic paths, and,
furthermore, McGee modulates the difficulty level of questions, based upon
whether the health-care professional provides correct or incorrect responses
to prior questions. Id. at 31 (citing McGee 2). The Appellant argues that
these aspects of McGee preclude any teaching or suggestion of the claimed
“linear progression,” in which there is only a single series of questions and
correct answers (the claimed “common set of data points”) that applies to all
the health-care professional being assessed. Id. at 31–32.
Yet, the Examiner relies upon Jakobovits, not McGee, for the claimed
“linear progression” with a single series of questions, which necessarily
“provide a common set of data points to assess the health-care professional.”
See Final 9 (citing Jakobovits col. 29, l. 12 – col. 31, l. 31).
Indeed, Jakobovits discloses a series of questions relating to the
progression of a single medical case. See Jakobovits col. 29, l. 12 – col. 30,
l. 31. Accordingly, we are not persuaded of error in the Examiner’s finding
that Jakobovits’ disclosure of the correct answer and explanation for each
question, charting the path of a single medical treatment case (see id.), and
with an unfolding disclosure of images (see id. at col. 30, ll. 30–31
(“interleaving of quiz questions and display of images”)) teaches the claimed
“a subsequent digital image, and a subsequent question follow a linear
progression from the corrective instruction to provide a common set of data
points to assess the health-care professional.”
Therefore, in view of the foregoing, the Appellant does not persuade
us of error in the rejection of independent claim 9. The Appellant relies
upon the same analysis, with regard to independent claim 17 and dependent
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claims 10–16 and 18–20. Appeal Br. 32. Accordingly, we sustain the
rejection of claims 9–20 under 35 U.S.C. § 103.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
7, 9–20 101 Subject-matter
eligibility
7, 9–20
7, 9–20 103 Cyr, Jakobovits,
Thorne, McGee
7, 9–20
Overall Outcome 7, 9–20

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