Eric Cohen-Solal et al.Download PDFPatent Trials and Appeals BoardAug 20, 20212021000668 (P.T.A.B. Aug. 20, 2021) Copy Citation 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.) Appeal 2021-000668 Application 13/818,103 2 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 Appeal 2021-000668 Application 13/818,103 3 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. Appeal 2021-000668 Application 13/818,103 4 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 Appeal 2021-000668 Application 13/818,103 5 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. Appeal 2021-000668 Application 13/818,103 6 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.” Appeal 2021-000668 Application 13/818,103 7 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 Appeal 2021-000668 Application 13/818,103 8 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 Appeal 2021-000668 Application 13/818,103 9 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 Appeal 2021-000668 Application 13/818,103 10 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 Appeal 2021-000668 Application 13/818,103 11 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 Appeal 2021-000668 Application 13/818,103 12 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 Appeal 2021-000668 Application 13/818,103 13 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)). Appeal 2021-000668 Application 13/818,103 14 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”).) Appeal 2021-000668 Application 13/818,103 15 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.) Appeal 2021-000668 Application 13/818,103 16 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. Appeal 2021-000668 Application 13/818,103 17 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 Copy with citationCopy as parenthetical citation