Eric Cohen-Solal et al.

Patent Trials and Appeals Board

Aug 20, 2021

2021000668 (P.T.A.B. Aug. 20, 2021)

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.
13/818,103 02/21/2013 Eric Cohen-Solal 2010P00890WOUS 2993
24737 7590 08/20/2021
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
1600 Summer Street
5th Floor
Stamford, CT 06905
EXAMINER
TIEDEMAN, JASON S
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
08/20/2021 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 ERIC COHEN-SOLAL and MICHAEL LEE
____________

Appeal 2021-000668
Application 13/818,1031
Technology Center 3600
____________

Before NINA L. MEDLOCK, BRUCE T. WIEDER, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

WIEDER, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1, 4–11, and 35–45. 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. Appellant identifies the real party in interest as
Koninklijke Philips N.V. (Appeal Br. 2.)
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CLAIMED SUBJECT MATTER
Appellant’s invention “relates to clinical informatics and more
particularly to assigning cases to be evaluated to one or more case
evaluators.” (Spec. 1.) The invention “is described with particular
application to assigning images from imaging procedures for patients to
radiologist evaluators for reading based at least on dynamic radiologist
profiles for the radiologists.” (Id.)
Claims 1, 35, and 41 are the independent claims on appeal. Claim 1 is
illustrative. It recites:
1. A method, comprising:
obtaining, with a processor, case profiles for a plurality of
cases for patients to be examined from a non-transitory storage
medium, wherein a case profile of the case profiles describes at
least one aspect of a case of the plurality of cases that is extracted
from patient information for a corresponding patient of the
patients, including a reason the corresponding patient is being
examined, wherein the reason includes ruling out a presence of a
predetermined type of diseased tissue;
obtaining, with the processor, dynamic evaluator profiles
created for each of a plurality of case evaluators, wherein a
dynamic evaluator profile of the dynamic evaluator profiles
characterizes an expertise of a corresponding case evaluator of
the plurality of case evaluators based on current available case
evaluation reports which are produced by the case evaluator and
stored in the non-transitory storage medium, wherein the
dynamic evaluator profile indicates the case evaluator has
experience reading images to identify the presence of the
predetermined type of diseased tissue;
generating, with the processor, a signal that assigns the
case of the plurality of cases for patients to be examined to the
case evaluator of the plurality of case evaluators based on the
dynamic evaluator profile indicating the case evaluator has
experience reading the images to identify the presence of the
predetermined type of diseased tissue; and
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transmitting, with the processor, the signal to a picture
archiving and communication system or a radiology information
system of the case evaluator assigned to the case, which displays
the case to allow the case evaluator assigned to the case to review
the case and generate a case report for the reviewed case.

REJECTIONS
Claims 1, 4–11, and 35–45 are rejected under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more.
Claims 1, 35, and 41 are rejected under 35 U.S.C. § 103(a) as
unpatentable in view of Nekrich (US 2008/0292152 A1, pub. Nov. 27, 2008)
and Applicant Admitted Prior Art (hereinafter “AAPA”).
Claims 4, 7, 8, 10, 11, 36, 39,2 40, 42, and 45 are rejected under
35 U.S.C. § 103(a) as unpatentable in view of Nekrich, AAPA, and
Stoval, III (US 2007/0083849 A1, pub. Apr. 12, 2007).
Claims 5, 9, 37, and 43 are rejected under 35 U.S.C. § 103(a) as
unpatentable in view of Nekrich, AAPA, and Jones (US 6,516,324 B1, iss.
Feb. 4, 2003).
Claims 6, 38, and 44 are rejected under 35 U.S.C. § 103(a) as
unpatentable in view of Nekrich, AAPA, and Evertsz
(US 2002/0194019 A1, pub. Dec. 19, 2002).

2 The rejection of claim 39 appears on page 15 of the Final Action. We treat
the omission of claim 39 from the section heading on page 12 of the Final
Action as a harmless typographical error.
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ANALYSIS
The § 101 rejection
“Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title.” 35 U.S.C. § 101. Section 101, however,
“contains an important implicit exception: Laws of nature, natural
phenomena, and abstract ideas are not patentable.” Alice Corp. v. CLS Bank
Int’l, 573 U.S. 208, 216 (2014) (quoting Ass’n for Molecular Pathology v.
Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
Alice applies a two-step framework, earlier set out 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, 573 U.S. at 217.
Under the two-step framework, it must first be determined if “the
claims at issue are directed to a patent-ineligible concept.” Id. at 218. If the
claims are determined to be directed to a patent-ineligible concept, e.g., an
abstract idea, then the second step of the framework is applied to determine
if “the elements of the claim . . . contain[] an ‘ “inventive concept” ’
sufficient to ‘transform’ the claimed abstract idea into a patent-eligible
application.” Id. at 221 (citing Mayo, 566 U.S. at 72–73, 79).
With regard to step one of the Alice framework, we apply a “directed
to” two-prong test to: 1) evaluate whether the claim recites a judicial
exception, and 2) if the claim recites a judicial exception, evaluate whether
the claim “appl[ies], rel[ies] on, or use[s] the judicial exception in a manner
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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.” See USPTO, 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50, 54 (Jan. 7, 2019) (hereinafter “2019 Guidance”).
The Examiner determines that claim 1 recites a method of “assigning
cases to a radiologist based on a radiologist profile.” (Final Action 4.)3 The
Examiner determines that “the claimed invention amounts to managing
personal behavior or interaction between people,” including following rules,
and that this “falls within the ‘method of organizing human activity’
grouping of abstract ideas.” (Id.)4
Appellant argues that “at least the ‘obtaining … dynamic evaluator
profiles’ limitation is not a method for organizing human behavior.”
(Appeal Br. 5.) Appellant argues that claim 1 includes “an improvement to
existing technology or technical field. This includes reciting a specific
manner for assigning radiologists to cases, i.e., based on radiologist
experience reading images to identify the presence of the predetermined type
of diseased tissue.” (Id. at 6.)
Under step one of the Alice framework, we “look at the ‘focus of the
claimed advance over the prior art’ to determine if the claim’s ‘character as a
whole’ is directed to excluded subject matter.” Affinity Labs of Tex., LLC v.

3 The Examiner further describes claim 1 as encompassing “reassigning the
case based on a change in the case and a change in the radiologist profile.”
(Final Action 4.) However, the language regarding reassigning the assigned
case was removed from claim 1 by amendments filed January 22, 2020.
4 The Examiner makes no determination as to whether claim 1 also falls
within the “mental processes” grouping of abstract ideas. (See 2019
Guidance at 52.) We decline to undertake such analysis in the first instance.
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DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting Elec. Power
Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)).
The “directed to” inquiry . . . cannot simply ask whether the
claims involve a patent-ineligible concept, because essentially
every routinely patent-eligible claim involving physical products
and actions involves a law of nature and/or natural phenomenon
. . . . Rather, the “directed to” inquiry applies a stage-one filter
to claims, considered in light of the specification, based on
whether “their character as a whole is directed to excluded
subject matter.” Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015).
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). In
other words, the first step of the Alice framework “asks whether the focus of
the claims is on the specific asserted improvement in [the relevant
technology] or, instead, on a process that qualifies as an ‘abstract idea’ for
which computers are invoked merely as a tool.” Id. at 1335–36; see also
2019 Guidance at 54–55.
The Specification provides evidence as to what the claimed invention
is directed. In this case, the Specification discloses that the invention relates
to “assigning cases to be evaluated to one or more case evaluators.”
(Spec. 1.) Claim 1 provides further evidence. Claim 1 recites “obtaining . . .
case profiles for a plurality of cases,” “obtaining . . . dynamic evaluator
profiles created for each of a plurality of case evaluators,” “generating . . . a
signal that assigns the case of the plurality of cases . . . to the case evaluator
of the plurality of case evaluators based on the dynamic evaluator profile,”
“and transmitting . . . the signal to a picture archiving and communication
system or a radiology information system of the case evaluator assigned to
the case.”
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In other words, claim 1 recites retrieving information (obtaining case
and evaluator profiles), analyzing and outputting information (generating an
assignment signal based on the evaluator profile), and transmitting
information. Retrieving, analyzing, outputting, and transmitting information
have been determined to be directed to an abstract idea. See, e.g., Alice,
573 U.S. at 225 (using a computer-implemented system “to obtain data,
adjust account balances, and issue automated instructions” did not result in
claim being non-abstract), Univ. of Fla. Research Found., Inc. v. General
Elec. Co., 916 F.3d 1363, 1367 (Fed. Cir. 2019) (claims “directed to the
abstract idea of ‘collecting, analyzing, manipulating, and displaying data’”),
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94 (Fed.
Cir. 2016) (determining “that the ‘realm of abstract ideas’ includes
‘collecting information, including when limited to particular content’” as
well as analyzing and presenting information), Accenture Glob. Servs.,
GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1344 (Fed. Cir. 2013)
(treating as an abstract idea generating tasks to be performed based on rules),
Cyberfone Sys., L.L.C. v. CNN Interactive Grp., Inc., 558 F. App’x 988
(Fed. Cir. 2014) (claims directed to organizing, storing, and transmitting
information determined to be directed to an abstract idea).
Claim 1 does not recite how the processor obtains the case profiles,
how the processor obtains the dynamic evaluator profiles, how the processor
generates a signal that assigns a case to a case evaluator, i.e., how the
processor determines that an evaluator profile “indicat[es] the case evaluator
has experience reading the images to identify the presence of the
predetermined type of diseased tissue,” how the processor transmits the
signal to the picture archiving/radiology information system, or even how
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the system displays the case. Appellant does not argue that Appellant
invented the generically recited computing components, i.e., a processor, a
non-transitory storage medium, a picture archiving and communication
system, or a radiology information system. (See, e.g., Spec 1, 3–5, 11.)
“As many cases make clear, even if a process of collecting and
analyzing information is ‘limited to particular content’ or a particular
‘source,’ that limitation does not make the collection and analysis other than
abstract.” SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168 (Fed.
Cir. 2018). The “character of [the] information simply invokes a separate
category of abstract ideas.” Id. Moreover, “[a] claim does not cease to be
abstract for section 101 purposes simply because the claim confines the
abstract idea to a particular technological environment in order to effectuate
a real-world benefit.” In re Mohapatra, 842 F. App’x 635, 638 (Fed.
Cir. 2021).
In cases involving software innovations, such as we have here, the
inquiry as to whether the claims are directed to an abstract idea “often turns
on whether the claims focus on ‘the specific asserted improvement in
computer capabilities ... or, instead, on a process that qualifies as an
“abstract idea” for which computers are invoked merely as a tool.’” Finjan,
Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1303 (Fed. Cir. 2018) (quoting
Enfish, LLC, 822 F.3d at 1335–36). Here, the asserted improvement is to the
information provided, i.e., the signal assigning the case to an evaluator. The
processor, non-transitory storage medium, and picture archiving/radiology
information system are invoked merely as tools. Regardless of “how much
of an advance in the . . . field the claims recite, the advance lies entirely in
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the realm of abstract ideas, with no plausibly alleged innovation in the non-
abstract application realm.” SAP Am., Inc., 898 F.3d at 1163.
We do not find any 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 computer technology or functionality to the claimed
invention or that otherwise indicates that the claimed invention “appl[ies],
rel[ies] on, or use[s] 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.” (See 2019
Guidance at 54–55.)
In short, the intrinsic evidence shows that claim 1 recites a method for
assigning case evaluators to patient cases. See In re Downing, 754 F. App’x
988, 993 (Fed. Cir. 2018) (determining claims “directed to the concept of
personal management, resource planning, or forecasting” to be directed to an
abstract idea). This is an example of managing personal behavior or
relationships or interactions between people (including following rules or
instructions, and resource planning), i.e., certain methods of organizing
human activity. (See id., 2019 Guidance at 52; see also Final Action 3–4.)
Nonetheless, Appellant argues that claim 1 improves existing
technology by “reciting a specific manner for assigning radiologists to
cases.” But, as discussed above, claim 1 does not recite how the processor
performs the assignment. Claim 1 merely recites the functional result of
assigning the case “based on the dynamic evaluator profile indicating the
case evaluator has experience reading the images to identify the presence of
the predetermined type of diseased tissue,” i.e., claim 1 recites a desired
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result to be achieved by any and all means. In other words, “the claim
language here provides only a result-oriented solution, with insufficient
detail for how [it is accomplished]. Our law demands more.” Intellectual
Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1342 (Fed.
Cir. 2017).
Appellant also argues that “the ‘obtaining ... dynamic evaluator
profiles’ does not include any limitation that manages personal behavior,
including a person’s interaction with a computer; the limitation includes no
rules, instructions, etc. for a person to follow online or otherwise. Hence,
the subject limitation is not a method of organizing human behavior.”
(Appeal Br. 6.) Thus, Appellant argues, the claim is subject matter eligible.
(Id.)
The 2019 Guidance cites Alice as an example of claims reciting
certain methods of organizing human activity. (2019 Guidance at 52 n.13.)
The method claim at issue in Alice (claim 33) recites, in part, “(b) obtaining
from each exchange institution a start-of-day balance for each shadow credit
record and shadow debit record.” Alice, 573 U.S. at 213 n.2. If we apply
Appellant’s reasoning to claim 33 of Alice, then claim 33 would recite
patent-eligible subject matter. But the Supreme Court tells us that claim 33
of Alice does not recite patent-eligible subject matter. Therefore, we do not
find Appellant’s argument persuasive.
In view of the foregoing, under prong one of the two prong test in the
2019 Guidance, claim 1 recites an abstract idea, i.e., certain methods of
organizing human activity; and, under prong two, additional elements in
claim 1 do not “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
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more than a drafting effort designed to monopolize the judicial exception.”
(See 2019 Guidance at 54.) As such, under step one of the Alice framework,
claim 1 is directed to an abstract idea, and we move to step two.
Step two of the Alice framework has been described “as a search for
an ‘ “inventive concept” ’ –i.e., an element or combination of elements that
is ‘sufficient to ensure that the patent in practice amounts to significantly
more than a patent upon the [ineligible concept] itself.’” Alice, 573 U.S.
at 217–18 (alteration in original) (quoting Mayo, 566 U.S. at 72–73).
Taking the claim elements separately, the functions performed in
claim 1 by the generic computer components are purely conventional.
Retrieving, analyzing, outputting, and transmitting information are well-
understood, routine, and conventional functions previously known to the
industry. See Elec. Power Grp., 830 F.3d at 1356 (The claims “do not
include any requirement for performing the claimed functions of gathering,
analyzing, and displaying in real time by use of anything but entirely
conventional, generic technology. The claims therefore do not state an
arguably inventive concept . . . .”); see also Intellectual Ventures I LLC v.
Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016) (determining
receiving, processing, and sending data to be well-known, generic computer-
implemented steps), Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d
1306, 1335 (Fed. Cir. 2015) (determining claims requiring “arranging,
storing, retrieving, sorting, eliminating, determining” to “involve the normal,
basic functions of a computer” and to be “conventional, routine, and well-
known”).
Considered as an ordered combination, the generic computer
components of Appellant’s claimed invention add nothing that is not already
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present when the limitations are considered separately. For example,
claim 1 does not purport to improve the functioning of the computer
components themselves. Nor does it effect an improvement in any other
technology or technical field. Instead, claim 1 amounts to nothing
significantly more than an instruction to apply the abstract idea using generic
computer components performing routine computer functions. That is not
enough to transform an abstract idea into a patent-eligible invention. See
Alice, 573 U.S. at 225–26.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 1. Independent claims 35 and 41 contain similar language and
Appellant relies on the same arguments as for claim 1. For the reasons
discussed, we are not persuaded that the Examiner erred in rejecting
claims 35 and 41. Claims 5–11, 37–40, and 43–45 are not separately argued.
With regard to dependent claims 4, 36, and 42, Appellant argues that
these claims “include additional limitations that integrate the alleged abstract
idea into a practical application.” (Appeal Br. 7.) Specifically, Appellant
argues that
[s]ince the dynamic evaluator profiles are used to assign cases to
evaluators, this act is not extra-solution activity at least because
in aggregate it alters a next assignment relative to using the
dynamic evaluator profiles before the update since a dynamic
evaluator profile has changed. This implicitly improves the
technology and integrates the alleged abstract idea into a
practical application.
(Id.) We do not find this argument persuasive.
Claim 4 recites: “The method of claim 1, further comprising:
updating the dynamic evaluator profile for the case evaluator based on the
generated case report.” Claims 36 and 42 contain similar language. Claim 4
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is silent as to how the profile is updated. Claim 4 is also silent as to what
updates the profile. Applying a broadest reasonable interpretation, the
profile may be updated by a human simply typing additional information
into a profile. Although this may improve the quality of the information
provided, we do not see how this improves the technology. See, e.g., BSG
Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1288 (Fed. Cir. 2018) (“[A]n
improvement to the information stored by a database is not equivalent to an
improvement in the database’s functionality.”). We are not persuaded that
the Examiner erred in rejecting claims 4, 36, and 42.

The § 103(a) rejections
Obviousness is a legal conclusion involving a determination of
underlying facts.
Under § 103, the scope and content of the prior art are to be
determined; differences between the prior art and the claims at
issue are to be ascertained; and the level of ordinary skill in the
pertinent art resolved. Against this background, the obviousness
or nonobviousness of the subject matter is determined. Such
secondary considerations as commercial success, long felt but
unsolved needs, failure of others, etc., might be utilized to give
light to the circumstances surrounding the origin of the subject
matter sought to be patented.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting Graham v.
John Deere Co. of Kansas City, 383 U.S. 1, 17–18 (1966)). “[R]ejections on
obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” Id. at 418
(brackets in original) (quoting In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006)).
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With regard to the scope and content of the prior art, Nekrich
discloses a system “includ[ing] means for selecting an image analyst from
the plurality of image analysts, for example, by comparing the image
information with the profile information of the plurality of analysts.”
(Nekrich ¶ 13.)
The Examiner, however, finds:
Nekrich may not explicitly teach
• wherein the reason includes ruling out a presence of a
predetermined type of disease tissue;[5]
• to identify the presence of the predetermined type of diseased
tissue [in the second obtaining limitation][6]
• to identify the presence of the determined [sic] type of diseased
tissue [in the generating limitation].
(Final Action 10.)
The Examiner finds that AAPA (in Appellant’s Specification) teaches
“to identify the presence of the predetermined type of diseased tissue,” i.e.,
that the case evaluator has experience reading images to identify the
presence of the predetermined type of diseased tissue. (Final Action 8, 11
(emphasis omitted).) Specifically, the Examiner finds that the last full

5 The Examiner finds that Nekrich “teaches that the image information
includes the [sic] ‘the portion of the anatomy to be imaged, as well as the
type of ailment the patient is suspected of having’ (ruling out a presence of a
predetermined type of disease tissue).” (Final Action 8–9 (citing Nekrich
¶ 36) (emphasis omitted).) “The Examiner notes that the cited portions of
Nekrich likely teach the above noted feature[s]; however AAPA [from
Appellant’s Specification] has been cited for completeness.” (Id. at 11.)
6 The Examiner makes no finding regarding the disclosure in paragraphs 54–
55 of Nekrich as to whether the taking into consideration of a radiologist’s
areas of specialty and subspecialty includes identifying the presence of a
predetermined type of diseased tissue. We decline to make such a finding in
the first instance. (See Nekrich ¶¶ 54–55; but see Spec. 1 (“there are
limitations in defining an expertise only with the sub-specialty”).)
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paragraph on page 1 of the Specification “teaches assigning a radiologist
based on specialized training (the profile of Nekrich) in the particular type of
radiological analysis required, meaning that the radiologist’s information
necessarily indicates that the radiologist has experience reading images to
identify the mass.” (Id. at 11 (emphasis omitted).)
Appellant argues that relied upon portions of the Specification
“expressly disclose[] that under the current state-of-the-art there is no means
to identify the radiologists based on ‘their experience in reading and
assessing cases’ for a predetermined type of diseased tissue.” (Reply Br. 9.;
see also Appeal Br. 8–9.)
The last full paragraph on page 1 of the Specification and the
subsequent paragraph, i.e., AAPA, disclose:
Assigning a case to a radiologist can be done using a pre-
defined “static” profile for the radiologists that includes general
domain of expertise, availability, and preferences. However,
there are limitations in defining an expertise only with the sub-
specialty and even the modality and body part preferences.
Consider a RIS [(Radiology Information System)] that receives
a computed tomography (CT) scan of the neck for an older
female patient with suspected masses in the parotid. Under the
current state-of-the-art, the RIS has the ability to send this scan
to be read by the next available radiologist whose file identifies
him or her as possessing specialized training in cervical CT.
Unfortunately, there is no means to identify the
radiologists based on their experience in reading and assessing
cases of parotid gland tumors in an elderly population. In this
case, the radiology department may have several cervical CT
specialists, but there may be one with the greatest experience in
this particular area of expertise, and it may be desirable to have
the option to send the patient images to this particular radiologist;
however, the patient is simply assigned to the next available
radiologist.
(Spec. 1–2.)
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We understand the above relied upon portions of the Specification as
teaching that it was known to assign patient cases to a radiologist based on
the radiologist having specialized training in a particular type of
radiographic imaging and a particular area of the human body, e.g., a
cervical CT. We further understand the relied upon portions of the
Specification as teaching, in at least one exemplary case, that it was not
known to assign patient cases to a radiologist based on the radiologist having
experience in cases involving a particular disease in a particular patient
population, e.g., parotid gland tumors in an elderly population.
This indicates that a radiologist with specialized training may not
necessarily have experience identifying a particular disease in a particular
patient population. Here, the Examiner has not provided sufficient
articulated reasoning to support the obviousness conclusion, i.e., why does
the disclosure in the Specification of assignment based on training or
experience in a particular type of imaging and a particular area of the body
teach “that the radiologist’s information necessarily indicates that the
radiologist has experience reading images to identify [a predetermined type
of diseased tissue].” (See Final Action 11.)
We will reverse this rejection of claim 1. For the same reason, we
will also reverse the rejection of independent claims 35 and 41. The
Examiner does not rely on the additional prior art to cure the above noted
deficiency. Therefore, we will also reverse the rejections of dependent
claims 4–11, 36–40, and 42–45.

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CONCLUSION
The Examiner’s rejection of claims 1, 4–11, and 35–45 under
35 U.S.C. § 101 is affirmed.
The Examiner’s rejections of claims 1, 4–11, and 35–45 under
35 U.S.C. § 103(a) are reversed.
Specifically:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 4–11,
35–45
101 Eligibility 1, 4–11,
35–45

1, 35, 41 103(a) Nekrich, AAPA 1, 35, 41
4, 7, 8,
10, 11,
36, 39,
40, 42, 45
103(a) Nekrich, AAPA,
Stoval, III
4, 7, 8,
10, 11,
36, 39,
40, 42, 45
5, 9, 37,
43
103(a) Nekrich, AAPA,
Jones
5, 9, 37,
43
6, 38, 44 103(a) Nekrich, AAPA,
Evertsz
6, 38, 44
Overall
Outcome
1, 4–11,
35–45

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