Brian A. Rosenfeld et al.

Patent Trials and Appeals Board

Jul 18, 2019

13465441 - (D) (P.T.A.B. Jul. 18, 2019)

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.
13/465,441 05/07/2012 Brian A. ROSENFELD 1999P01931US18 2280
24737 7590 07/18/2019
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus Avenue
Suite 340
Valhalla, NY 10595
EXAMINER
NAJARIAN, LENA
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
07/18/2019 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 BRIAN A. ROSENFELD and MICHAEL BRESLOW
____________

Appeal 2018-004553
Application 13/465,4411
Technology Center 3600
____________

Before KARA L. SZPONDOWSKI, SCOTT B. HOWARD, and
STEVEN M. AMUNDSON, Administrative Patent Judges.

HOWARD, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 2–6, 8–24, 26, and 32–41, which constitute all of
the claims pending in this application. Claims 1, 7, 25, and 27–31 have been
cancelled. App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 Appellants identify Koninklijke Philips Electronics N.V. as the real party
in interest. App. Br. 2.
Appeal 2018-004553
Application 13/465,441

2
THE INVENTION
The disclosed and claimed invention is directed to “care of the
critically ill that combines a real-time, multi-node telemedicine network and
an integrated, patient care management system to enable specially-trained
Intensivists to provide 24-hour/7-day-per-week patient monitoring and
management to multiple, geographically dispersed ICUs from both on-site
and remote locations.” Spec. ¶ 2.2
Claim 2, reproduced below, is illustrative of the claimed subject
matter:
2. A system for facilitating remote network-based
monitoring and providing dynamic-threshold-based alerts for
patients in geographically separate health care locations
comprising:
a computerized patient care management system
comprising access to a database and a rules engine;
a network in communication with the geographically
separate health care locations and a remote command center over
which patient data elements relating to patients in the
geographically separate health care locations can be received by
the computerized patient care management system via the
network, and over which patient data elements, and alerts can be
communicated to the remote command center via the network;
patient data elements stored in the database, which patient
data elements comprise data elements continuously-obtained
from patient monitoring stations that monitor patients located in
the geographically separate health care locations during
respective time periods, and data elements associated with

2 We refer to the Specification filed May 7, 2012 (“Spec.”); Final Office
Action mailed June 23, 2017 (“Final Act.”); Appeal Brief filed Oct. 12, 2017
(“App. Br.”); Examiner’s Answer mailed Feb. 6, 2018 (“Ans.”); and the
Reply Brief filed Mar. 27, 2018 (“Reply Br.”).
Appeal 2018-004553
Application 13/465,441

3
medical conditions of the patients located in the geographically
separate health care locations,
wherein, the computerized patient care management
system comprises instructions for:
utilizing information generated by a user-interactive
decision support algorithm, wherein with respect with a
first patient of one of the geographically separate health
care locations, the decision support algorithm uses the
stored patient data elements of the first patient, the patient
data elements being continuously-obtained from a first
monitoring station during a first time period, and provides
patient care advice to the computerized patient care
management system responsive to user input for the first
patient in response to a display of a plurality of risk factors
and/or symptoms relevant to a condition for which the first
patient is receiving care; and
communicating the patient care advice to the one of
the geographically separate health care locations in which
the first patient resides, and
wherein the computerized patient care management
system further comprises instructions for:
utilizing the information generated by the
rules engine associated with the patients in the
geographically separate health care locations to
determine if an alert should be communicated to the
remote command center, wherein the rules engine
applies rules repeatedly and automatically to at least
two patient data elements, the rules including
patient-specific thresholds for the at least two data
elements, and such that:
with respect to the first patient, the rules
engine repeatedly and automatically applies the
rules to the at least two data elements of the first
patient during the first time period to identify
existing or potential conditions of the first patient;
automatically adjust the patient-specific
thresholds for the at least two data elements based
Appeal 2018-004553
Application 13/465,441

4
on the continuously-obtained data elements,
wherein automatically adjusting the patient-specific
thresholds for the at least two data elements
comprises automatically adjusting thresholds for
the at least two data elements specific to the first
patient based on the continuously-obtained data
elements for the first patient such that the thresholds
for the at least two data elements specific to the first
patient change from first threshold values at a first
time during the first period to second threshold
values at a second time during the first period; and
generating and communicating, based the
automatically-adjusted patient-specific thresholds for the
at least two data elements, alerts to be concurrently
available at the remote command center, via the network,
for all patients in the geographically separate health care
locations.

REFERENCES
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
David US 5,441,047 Aug. 15, 1995
Iliff US 5,594,638 Jan. 14, 1997

REJECTIONS
Claims 2–6, 8–24, 26, and 32–41 stand rejected under 35 U.S.C. § 101
for being directed to patent-ineligible subject matter. Final Act. 2.
Claims 2–6, 8–24, 26, and 32–41 stand rejected under 35 U.S.C.
§ 112, first paragraph, for failing to comply with the written-description
requirement. Final Act. 5.
Appeal 2018-004553
Application 13/465,441

5
Claims 38–41 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over David and Iliff. Final Act. 6.

ANALYSIS
Section 101 Rejection
An invention is patent eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See Alice, 573
U.S. at 219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts
Appeal 2018-004553
Application 13/465,441

6
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 176; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, . . . and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a
patent-eligible application.” Alice, 573 U.S. at 221 (quotation marks
omitted). “A claim that recites an abstract idea must include ‘additional
Appeal 2018-004553
Application 13/465,441

7
features’ to ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
The PTO recently published revised guidance on the application of
§ 101. USPTO’s January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“Memorandum”). Under that guidance, we first look to whether the claim
recites:
(1) 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) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a)–(c), (e)–(h)).
See Memorandum, 84 Fed. Reg. at 52, 55–56. Only if a 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:
(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 id. at 56.
USPTO Step 2A, Prong 1
The Examiner determines the claimed invention is directed to the
abstract idea of comparing new and stored information and using rules to
Appeal 2018-004553
Application 13/465,441

8
identify options. Final Act. 2; see Final Act. 3.
Appellants argue the Examiner overgeneralized the claimed invention
and ignored limitations of the claims without considering the claims as a
whole. App. Br. 16–17; see App. Br. 19–20; see Reply Br. 4.
We are not persuaded by Appellants’ arguments. The Memorandum
“extracts and synthesizes key concepts identified by the courts as abstract
ideas to explain that the abstract idea exception includes the following
groupings of subject matter, when recited as such in a claim limitation(s)
(that is, when recited on their own or per se)”:
(a) Mathematical concepts—mathematical relationships,
mathematical formulas or equations, mathematical
calculations;

(b) Certain methods of organizing human activity—
fundamental economic principles or practices (including
hedging, insurance, mitigating risk); commercial or legal
interactions (including agreements in the form of contracts;
legal obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior or
relationships or interactions between people (including social
activities, teaching, and following rules or instructions); and
(c) Mental processes—concepts performed in the human mind
(including an observation, evaluation, judgment, opinion).
Memorandum, 84 Fed. Reg. at 52 (footnotes omitted).
Representative claim 2—with emphasis added—is reproduced below:
2. A system for facilitating remote network-based
monitoring and providing dynamic-threshold-based alerts for
patients in geographically separate health care locations
comprising:
. . . patient data elements relating to patients in the
geographically separate health care locations can be received
by the computerized patient care management system via the
network, and over which patient data elements, and alerts can
Appeal 2018-004553
Application 13/465,441

9
be communicated to the remote command center via the network
. . .
patient data elements comprise data elements
continuously-obtained from patient monitoring stations that
monitor patients located in the geographically separate health
care locations during respective time periods, and data elements
associated with medical conditions of the patients located in the
geographically separate health care locations . . .
utilizing information generated by a user-
interactive decision support algorithm, wherein with
respect with a first patient of one of the geographically
separate health care locations, the decision support
algorithm uses the stored patient data elements of the first
patient, the patient data elements being continuously-
obtained from a first monitoring station during a first time
period, and provides patient care advice to the
computerized patient care management system responsive
to user input for the first patient in response to a display
of a plurality of risk factors and/or symptoms relevant to
a condition for which the first patient is receiving care;
and
communicating the patient care advice to the one of
the geographically separate health care locations in
which the first patient resides, and . . .
utilizing the information generated by the
rules engine associated with the patients in the
geographically separate health care locations to
determine if an alert should be communicated to the
remote command center, wherein the rules engine
applies rules repeatedly and automatically to at
least two patient data elements, the rules including
patient-specific thresholds for the at least two data
elements, and such that:
with respect to the first patient, the rules
engine repeatedly and automatically applies the
rules to the at least two data elements of the first
Appeal 2018-004553
Application 13/465,441

10
patient during the first time period to identify
existing or potential conditions of the first patient;
automatically adjust the patient-specific
thresholds for the at least two data elements based
on the continuously-obtained data elements,
wherein automatically adjusting the patient-specific
thresholds for the at least two data elements
comprises automatically adjusting thresholds for
the at least two data elements specific to the first
patient based on the continuously-obtained data
elements for the first patient such that the thresholds
for the at least two data elements specific to the first
patient change from first threshold values at a first
time during the first period to second threshold
values at a second time during the first period; and
generating and communicating, based the
automatically-adjusted patient-specific thresholds for the
at least two data elements, alerts to be concurrently
available at the remote command center, via the network,
for all patients in the geographically separate health care
locations.
As relevant here, the Guidance explains that mental processes include
“concepts performed in the human mind,” such as “an observation,
evaluation, judgment, [or] opinion.” Memorandum, 84 Fed. Reg. at 52.
The emphasized limitations above are steps of observation,
evaluation, and judgement that can be performed by a human, either
mentally or with the use of pen and paper. Specifically, the claim limitations
identified above are directed to (i) continuously obtaining data elements
through patient monitoring, and obtaining data elements associated with
patient medical conditions (collecting information), (ii) applying a user-
interactive decision support algorithm to the data elements for a patient, and
applying rules-engine rules to data elements (comparing the collected
information against stored information, algorithms, and rules), and
Appeal 2018-004553
Application 13/465,441

11
(iii) based on the application of the support algorithm and rules to the data
elements, providing patient care advice, adjusting thresholds for the data
elements, and generating alerts when the data elements exceed the thresholds
(using rules to identify medical options including medical advice, adjusting
medical thresholds, and generating medical alerts).
Each of those steps, both individually and as a combination, can be
performed by a human, either mentally or with the aid of paper and pencil,
which is similar to the claims found patent ineligible as mental processes in
SmartGene. See SmartGene, Inc. v. Advanced Biological Labs., SA, 555
F. App’x 950, 955 (Fed. Cir. 2014) (“[T]he claim at issue here involves a
mental process excluded from section 101: the mental steps of comparing
new and stored information and using rules to identify medical options” and
“calls on a computer to do nothing that is even arguably an advance in
physical implementations of routine mental information-comparison and
rule-application process”); see also CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011) (“Thus, claim 3’s steps can all be
performed in the human mind. Such a method that can be performed by
human thought alone is merely an abstract idea and is not patent-eligible
under § 101. Methods which can be performed entirely in the human mind
are unpatentable not because there is anything wrong with claiming mental
method steps as part of a process containing non-mental steps, but rather
because computational methods which can be performed entirely in the
human mind are the types of methods that embody the ‘basic tools of
scientific and technological work’ that are free to all men and reserved
exclusively to none.”) (quoting Benson, 409 U.S. at 67) (footnote omitted));
Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed.
Appeal 2018-004553
Application 13/465,441

12
Cir. 2016) (“[W]ith the exception of generic computer-implemented steps,
there is nothing in the claims themselves that foreclose them from being
performed by a human, mentally or with pen and paper.”); Versata Dev.
Grp. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) (“Courts have
examined claims that required the use of a computer and still found that the
underlying, patent-ineligible invention could be performed via pen and paper
or in a person’s mind.”). Accordingly, we conclude the claim recites a
method of observation, evaluation, and judgment that can be performed in
the human mind, which is a mental process identified in the Memorandum,
and thus an abstract idea.
USPTO Step 2A, Prong 2
In determining whether claim 2 is “directed to” the identified abstract
ideas, we next consider whether claim 2 recites additional elements that
integrate the judicial exception into a practical application. For the reasons
set forth below, we discern no additional element (or combination of
elements) recited in claim 2 that integrates the judicial exception into a
practical application. See Memorandum at 54–55.
The Examiner determines the claimed “additional computer elements,
which are recited at a high level of generality, provide conventional
computer functions that do not add meaningful limits to practicing the
abstract idea.” Final Act. 2. Specifically, the Examiner determines there is
“no indication that the combination of elements improves the functioning of
a computer or improves any other technology” and “[t]heir collective
functions merely provide conventional computer implementation.” Ans. 6;
see Ans. 7. According to the Examiner, the claimed invention does not
focus an “an improvement in computers as tools, but on certain
Appeal 2018-004553
Application 13/465,441

13
independently abstract ideas that use computers as tools.” Ans. 8.
Appellants argue the claimed invention is “directed to a particular
useful application that provides an improvement to another technology or
technical field (e.g., computer assisted selection of medical interventions).”
App. Br. 10; see App. Br. 11, 21; see Reply Br. 2, 5–7, 8; see Reply Br. 9–
10. Specifically, Appellants assert the “claims are based on specific
computer rules/conditions to improve a system’s ability to facilitate selection
of medical interventions specific to a patient.” App. Br. 10.
Claim 2 does not constitute an improvement to computer technology;
rather, it merely adapts the mental process of (i) continuously obtaining data
elements through patient monitoring and obtaining data elements associated
with patient medical conditions, (ii) applying a user-interactive decision
support algorithm to the data elements for a patient, and applying rules-
engine rules to data elements, and (iii) based on the application of the
support algorithm and rules to the data elements, providing patient care
advice, adjusting thresholds for the data elements, and generating alerts
when the data elements exceed the thresholds, which can be performed
mentally or manually, to an execution of steps performed by computer
components. See Spec. ¶¶ 20–21 (“This e-solution uses network, database,
and decision support technologies to provide 24-hour connectivity between
Intensivists and ICUs . . . . Thus modular pieces (e.g. videoconferencing,
vital sign monitoring with smart alarms, hand-held physician productivity
tools, etc.) can be implemented, all of which can add value in a stand-alone
capacity.”).
Relying on a computer to perform routine tasks more quickly or more
accurately is insufficient to render a claim patent eligible. See Alice, 573
Appeal 2018-004553
Application 13/465,441

14
U.S. at 224 (“use of a computer to create electronic records, track multiple
transactions, and issue simultaneous instructions” is not an inventive
concept); Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Can. (U.S.), 687
F.3d 1266, 1278 (Fed. Cir. 2012) (a computer “employed only for its most
basic function . . . does not impose meaningful limits on the scope of those
claims”); MPEP § 2106.05(f)(2) (“Use of a computer or other machinery in
its ordinary capacity for economic or other tasks (e.g., to receive, store, or
transmit data) or simply adding a general purpose computer or computer
components after the fact to an abstract idea (e.g., a fundamental economic
practice or mathematical equation) does not provide significantly more.”).
Appellants analogize the claims here to the claims in McRO. See
App. Br. 10–11, 18, 21 (citing McRO, Inc. v. Bandai Namco Games Am.
Inc., 837 F.3d 1299 (Fed. Cir. 2016)). In particular, Appellants contend that
the claims here recite “a particular technical solution that uses specific ‘rules
in a process specifically designed to achieve an improved technological
result in conventional industry practice’ (e.g., medical industry practice) and,
‘therefore, is not directed to an abstract idea.’” App. Br. 21.
McRO does not aid Appellants. The claims in McRO—unlike the
claims here—recited a “specific . . . improvement in computer animation”
using “unconventional rules” that related “sub-sequences of phonemes,
timings, and morph weight sets” to automatically animate lip
synchronization and facial expressions for three-dimensional characters that
only human animators could previously produce. McRO, 837 F.3d at
1302–03, 1307–08, 1313–15. In McRO, “the incorporation of the claimed
rules” improved an existing technological process. Id. at 1314.
Unlike the claims in McRO, the claims here do not improve an
Appeal 2018-004553
Application 13/465,441

15
existing technological process. See Alice, 573 U.S. at 223 (explaining that
“the claims in Diehr were patent eligible because they improved an existing
technological process”); see also Final Act. 2–4; Ans. 5–8. As the Examiner
determines, the claimed invention does not focus on improving an existing
technological process, “but on certain independently abstract ideas that use
computers as tools.” Ans. 8. We further agree with the Examiner that the
claimed
additional limitations of a computerized system, engine, remote
command center, monitoring stations, a computer system
comprising one or more processors, and monitoring devices . . .
are recited at a high level of generality and are recited as
performing generic computer functions (i.e., accessing
information, receiving/communicating information, storing
information, displaying information, analyzing information,
communicating audio/video, obtaining information, adjusting
information, applying rules, and generating information)
routinely used in computer applications.
Final Act. 3; see Final Act. 4; see Ans. 5–6. Hence, the claims here do not
resemble the claims in McRO.
Appellants further analogize the claims here to the claims in
BASCOM. App. Br. 19–20 (citing BASCOM Glob. Internet Servs., Inc. v.
AT&T Mobility LLC, 827 F.3d 1341, 1351 (Fed. Cir. 2016)). In particular,
Appellants argue that “there is still absolutely no analysis explaining why
the ordered combination as a whole does not amount to patent-eligible
subject matter” and “[g]eneric computer operations can, in an ordered
combination, constitute an inventive concept.” App. Br. 20.
Appellants misplace their reliance on BASCOM. There, the claims
recited a “specific method of filtering Internet content” requiring “the
installation of a filtering tool at a specific location, remote from the end-
Appeal 2018-004553
Application 13/465,441

16
users, with customizable filtering features specific to each end user.”
BASCOM, 827 F.3d at 1345–46, 1350. The Federal Circuit reasoned that the
claims covered “a technology-based solution . . . to filter content on the
Internet that overcomes existing problems with other Internet filtering
systems” and “improve[s] an existing technological process.” Id. at 1351
(citing Alice, 573 U.S. at 223); see Alice, 573 U.S. at 223 (explaining that
“the claims in Diehr were patent eligible because they improved an existing
technological process”).
In contrast to the claims in BASCOM, the claims here do not cover a
technology-based solution that improves an existing technological process.
See Final Act. 2–4; Ans. 5–8. As the Examiner determines, the claimed
invention does not focus on improving an existing technological process,
“but on certain independently abstract ideas that use computers as tools.”
Ans. 8. Hence, the claims here do not resemble the claims in BASCOM.
Accordingly, we are not persuaded of error in the Examiner’s
determination that claim 2 is directed to an abstract idea, and we find the
claimed additional elements do not integrate the abstract idea into a practical
application.
USPTO Step 2B
Turning to step 2 of the Alice/Mayo framework, we look to whether
claim 2 (a) adds a specific limitation or combination of limitations that are
not well-understood, routine, conventional activity in the field, or (b) simply
appends well-understood, routine, conventional activities previously known
to the industry, specified at a high level of generality, to the judicial
exception. Memorandum, 84 Fed. Reg. at 56.
Appeal 2018-004553
Application 13/465,441

17
The Examiner determines that the claimed additional elements recite
“[g]eneric computer components” that “perform[] generic computer
functions that are well-understood, routine, and conventional activities [that]
amount to no more than implementing the abstract idea with a computerized
system.” Final Act. 3–4; see Reply Br. 6–7.
Appellants argue there is no evidence “with regard to how the claimed
invention as a whole is a well-understood, routine, conventional activity.”
App. Br. 10; see Ans. 17–18.
We are not persuaded by Appellants’ argument. As discussed above,
claim 2 is directed to (i) continuously obtaining data elements through
patient monitoring and obtaining data elements associated with patient
medical conditions, (ii) using the data elements for a patient using a user-
interactive decision support algorithm, and applying rules-engine rules to
data elements, and (iii) based on the application of the support algorithm and
rules to the data elements, providing patient care advice, adjusting thresholds
for the data elements, and generating alerts when the data elements exceed
the thresholds, which can be performed mentally or manually. Similarly, the
additional elements in the claim amount to no more than mere instructions to
apply the abstract idea using generic computer components, which is
insufficient to provide an inventive concept.
Specifically, the Specification describes the computer elements as
generic computer elements as part of an “e-solution us[ing] network,
database, and decision support technologies.” Spec. ¶ 20. The Specification
further describes “modular pieces (e.g., videoconferencing, vital sign
monitoring with smart alarms, hand-held physician productivity tools, etc.)
[that] can be implemented.” Spec. ¶ 21. The Specification describes “an
Appeal 2018-004553
Application 13/465,441

18
integrated video/voice/data network application [that] enables continuous
real-time management of ICU patients” and “a client-server database
application – integrated to the remote care network – provides the data
analysis, data presentation, productivity tools and expert knowledge.” Spec.
¶ 23. An example provided in the Specification details “the patient care
management system further comprises a relational database for storing a
plurality of decision support algorithms and for prompting intensivists to
provide care to patients based upon any of the decision support algorithms.”
Spec. ¶ 58. A further example details a “[c]ommand center/remote location
202 comprises an applications server 262 for the purpose of running various
applications for the intensivists and command center/remote location staff,”
along with a “switch 256” and “router 258” allowing for “point to point
communication over a T1 line,” “[h]ot phones 252 and 254 [to] allow
communication,” “switch 272 for the purpose of interfacing with the various
audio-video feeds 274, 276 from the various patient rooms,” and a “local
work station 280.” Spec. ¶¶ 169–170. Accordingly, we agree with the
Examiner that the additional claim limitations besides the abstract idea are
well-understood, routine, and conventional elements.
Appellants do not direct our attention to anything in the Specification
that indicates the computer components perform anything other than well-
understood, routine, and conventional functions, such “accessing
information, receiving/communicating information, storing information,
displaying information, analyzing information, communicating audio/video,
obtaining information, adjusting information, applying rules, and generating
information.” Final Act. 3; see buySAFE, Inc. v. Google, Inc., 765 F.3d
1350, 1355 (Fed. Cir. 2014) (“That a computer receives and sends the
Appeal 2018-004553
Application 13/465,441

19
information over a network—with no further specification—is not even
arguably inventive.”); In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607,
614 (Fed. Cir. 2016) (server that receives data, extracts classification
information from the received data, and stores the digital images insufficient
to add an inventive concept); Alice, 573 U.S. at 225–26 (receiving, storing,
sending information over networks insufficient to add an inventive concept);
CyberSource, 654 F.3d at 1370 (use of Internet to verify credit-card
transactions does not add enough to abstract idea of verifying the
transaction).
Further, Appellants’ argument that the pending claims are patent
eligible because they are otherwise novel and non-obvious (see App. Br. 10)
is not persuasive because it improperly conflates the requirements for
eligible subject matter (§ 101) with the independent requirements of novelty
(§ 102) and obviousness (§ 103). Although the second step in the Alice
framework is termed a search for an “inventive concept,” the analysis is not
an evaluation of novelty or non-obviousness. Alice, 573 U.S. at 217–18. A
novel and nonobvious claim directed to a purely abstract idea is,
nonetheless, patent ineligible. See Mayo, 566 U.S. at 78–79. Further,
“under the Mayo/Alice framework, a claim directed to a newly discovered
law of nature (or natural phenomenon or abstract idea) cannot rely on the
novelty of that discovery for the inventive concept necessary for patent
eligibility.” Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed.
Cir. 2016).
Conclusion on Section 101 Rejection
Accordingly, we sustain the Examiner’s rejection of claim 2 as being
directed to patent-ineligible subject matter, as well as independent claims 20
Appeal 2018-004553
Application 13/465,441

20
and 38 with commensurate limitations, and dependent claims 3–6, 8–19, 21–
24, 26, 32–37, and 39–41, not separately argued.

35 U.S.C. § 112, First Paragraph, Rejection
The Examiner finds “automatically adjust the patient-specific
thresholds,” as recited in claim 2, lacks written-description support. Final
Act. 5. Specifically, the Examiner finds the claimed “adjusting may be
manual (i.e., a user setting the thresholds),” and “there is no clear support in
the Specification for an ‘automatic’ adjusting.” Ans. 8.
Appellants contend “that the Specification conveys with reasonable
clarity to those skilled in the art that Appellants were in possession of the
claimed invention including the automatic adjusting of the patient-specific
thresholds.” App. Br. 22. Specifically, Appellants argue “the
Specification’s disclosure of the setting of initial thresholds and final
thresholds, and the data mining for trends that results [sic] in additional vital
sign thresholding clearly conveys the claim limitation of the automatic
adjusting of the patient-specific thresholds.” App. Br. 23. According to
Appellants, the “Specification discloses that thresholds for the rules engine
may be initially selected based on known association between changes in
two variables and adverse clinical events and that final thresholds may be set
based on evaluation of actual patient data.” App. Br. 22 (citing Spec.
¶¶ 186, 175); see Reply Br. 12.
We are not persuaded by Appellants’ arguments. To satisfy the
written-description requirement, a patent specification must describe the
claimed invention in sufficient detail that one skilled in the art can
reasonably conclude that the inventor had possession of the claimed
Appeal 2018-004553
Application 13/465,441

21
invention. See, e.g., Moba, B.V. v. Diamond Auto., Inc., 325 F.3d 1306,
1319 (Fed. Cir. 2003); Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563
(Fed. Cir. 1991). “[T]he test requires an objective inquiry into the four
corners of the specification from the perspective of a person of ordinary skill
in the art,” where “the specification must describe an invention
understandable to that skilled artisan and show that the inventor actually
invented the invention claimed.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598
F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). The exact level of detail
required depends upon “the nature and scope of the claims and on the
complexity and predictability of the relevant technology.” Id. Factors for
“evaluating the adequacy of the disclosure” may include “‘the existing
knowledge in the particular field, the extent and content of the prior art, the
maturity of the science or technology, [and] the predictability of the aspect at
issue.’” Id. (quoting Capon v. Eshhar, 418 F.3d 1349, 1359 (Fed. Cir.
2005).
Here, the Specification describes a “family of alarms [that] looks for
changes in vital signs over time, using pre-configured thresholds” that are
“patient-specific and setting/disease-specific.” Spec. ¶ 183. According to
the Specification:
For this alarm, thresholds were initially selected based on the
known association between changes in these two variables and
adverse clinical events. Actual patient data were then evaluated
to determine the magnitude of change in each variable that
yielded the best balance between sensitivity and specificity.
This process was used to set the final thresholds for the rules
engine.
Appeal 2018-004553
Application 13/465,441

22
Id. We agree with the Examiner that this passage supports using patient data
to adjust between initial and final thresholds for a rules engine, but does not
support making this adjustment automatically.
Similarly, we agree with the Examiner that Paragraphs 186 and 175—
cited by Appellants (App. Br. 22–23)—does notsupport making the
adjustment automatically. For example, although the Specification discusses
automatically ordering a test, that is not “automatically adjust[ing] the
patient-specific thresholds,” as recited in claim 2. See Spec. ¶ 175.
Similarly, the discussion of the steps involved in changing a catheter does
not discuss adjusting—automatically or otherwise—any patient-specific
threshold. See id. ¶ 186.
Accordingly, we sustain the Examiner’s 35 U.S.C. § 112, first
paragraph, rejection of claims 2–6, 8–24, 26, and 32–41.

Section 103 Rejection
Claim 38 recites “automatically adjust the patient-specific vital sign
thresholds based on the continuously-obtained vital sign information” and
“generate, based on the automatically-adjusted patient-specific vital sign
thresholds, alerts associated with respective ones of the patients.”
The Examiner finds David teaches continuously obtaining vital sign
information, and generating alerts for patients when a threshold is exceeded.
Final Act. 7 (citing David col. 5, l. 43–col. 6, l. 42, col. 14, l. 1–col. 15, l. 38,
col. 11, l. 34–col. 12, l. 47, Figs. 6, 7, 10); see Ans. 8–9. The Examiner
relies on Iliff to teach the claimed automatically adjusting patient-specific
vital sign thresholds based on continuously-obtained vital sign information,
and generating alerts based on those automatically-adjusted thresholds.
Appeal 2018-004553
Application 13/465,441

23
Final Act. 8 (citing Iliff col. 39, l. 45–col. 40, l. 34, col. 60, ll. 39–65,
col. 37, l. 44–col. 38, l. 29); see Ans. 8–9.
Appellants argue that Iliff teaches “providing computerized,
knowledge-based medical diagnostic and treatment advice to the general
public over a telephone network,” but fails to teach the claimed
automatically adjusting the patient-specific vital sign thresholds and
generating alerts based on those thresholds. App. Br. 25–26 (citing Iliff
col. 39, l. 45–col. 40, l. 34, col. 60, ll. 39–65, col. 37, l. 44–col. 38, l. 29).
Specifically, Appellants argue that Iliff’s “description of medical conditions’
thresholds . . . that can be modified . . . cannot be properly interpreted as
automatically adjusted patient-specific vital sign thresholds based on the
continuously-obtained vital sign information.” App. Br. 28. According to
Appellants, Iliff “merely states that that [sic] medical condition thresholds
. . . can be modified,” but “fails to teach such modifications are based on
continuously-obtained vital sign information, much less that such
modifications are ‘automatic’ modifications based on continuously-obtained
vital sign information.” Reply Br. 12–13.
We are persuaded by Appellants’ argument as the Examiner has not
identified sufficient evidence or provided sufficient explanation as to how
Iliff teaches “automatically adjusting the patient-specific vital sign
thresholds based on the continuously-obtained vital sign information” as
claimed.
The cited sections of Iliff explain that “[i]f the meta threshold is
reached, as determined at a decision state 502, the MDATA system 100
makes a recommendation based on this fact alone at state 504.” Iliff,
col. 37, ll. 61–64. In Iliff, the “threshold, of course, is different for each
Appeal 2018-004553
Application 13/465,441

24
complaint, and may be modified by a set of sensitivity factors.” Id. at
col. 38, ll. 2–4. Iliff shows:
All of the headache scoring thresholds are modified or
modulated by a series of sensitivity factors as are all aspects of
the system in which scalar thresholds are used. . . . For example,
if it was found that a subset of patients in which the diagnosis of
meningitis was not being made as early as it should be, then the
sensitivity factor modifying the temperature threshold could be
decreased so that now, a patient with a lower temperature would
be instructed to seek an immediate evaluation.
Id. at col. 40, ll. 26–34. In other words, the sections of Iliff cited by the
Examiner and on the record before us teach modifying the thresholds based
on trends (i.e., a finding that the diagnosis of meningitis was not being made
early enough in a subset of patients). However, these sections of Iliff do not
teach automatically adjusting the patient-specific vital sign thresholds based
on the continuously-obtained vital sign information as claimed. Therefore,
we agree with Appellants that the Examiner’s finding that Iliff teaches the
disputed limitation is in error because it is not supported by a preponderance
of the evidence. See In re Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985)
(Examiner’s burden of proving non-patentability is by a preponderance of
the evidence); see also In re Warner, 379 F.2d 1011, 1017 (CCPA 1967)
(“The Patent Office has the initial duty of supplying the factual basis for its
rejection. It may not, because it may doubt that the invention is patentable,
resort to speculation, unfounded assumptions or hindsight reconstruction to
supply deficiencies in its factual basis.”).
Accordingly, we are constrained on the record before us to reverse the
Examiner’s § 103 rejection of independent claim 38 and dependent claims
39–41. See App. Br. 21.
Appeal 2018-004553
Application 13/465,441

25

DECISION
We affirm the Examiner’s § 101 rejection of claims 2–6, 8–24, 26,
and 32–41.
We affirm the Examiner’s § 112, first paragraph, rejection of claims
2–6, 8–24, 26, and 32–41.
We reverse the Examiner’s § 103 rejection of claims 38–41.
Because we affirm at least one ground of rejection with respect to
each claim on appeal, we affirm the Examiner’s decision to reject all of the
pending claims.
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. § 41.50(f).

AFFIRMED