Ex Parte Ahn et al

Patent Trial and Appeal Board

May 31, 2018

13103129 (P.T.A.B. May. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/103, 129 05/09/2011
83622 7590 06/04/2018
SNYDER, CLARK, LESCH & CHUNG, LLP
950 Herndon Parkway, Suite 365
HERNDON, VA 20170
FIRST NAMED INVENTOR
SamS. Ahn
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
0029-0001 8669
EXAMINER
HOLCOMB, MARK
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
06/04/2018 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):
pto@snyderLLP.com
docket@snyderllp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte SAMS. AHN and HWA T. KHO
Appeal 2016-008274
Application 13/103,129 1
Technology Center 3600
Before MICHAEL C. ASTORINO, MATTHEWS. MEYERS, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1---6, 8-18, 20, and 22-24. We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM.
1 The Appellants identify Vascular Management Associates, Inc. as the real
party in interest. Appeal Br. 3.
Appeal2016-008274
Application 13/103,129
ILLUSTRATIVE CLAIM
1. A non-transitory computer-readable medium having
stored thereon sequences of instructions which, when executed
by at least one processor, cause the at least one processor to:
output a graphical user interface (GUI), the GUI
including a visual representation of at least a portion of a
human body and a text input area;
receive input from a user via the GUI, the input selecting
portions of the visual representation and identifying a sequence
of medical procedures that were performed on a patient with
respect to the selected portions;
highlight the selected portions on the visual
representation, the highlighted portions providing a graphical
representation of the sequence of medical procedures that were
performed on the patient;
automatically generate billing codes corresponding to the
medical procedures that were performed based on the input
received via the GUI;
automatically generate text, based on input received via
the GUI, identifying at least some of the medical procedures
that were performed;
display the billing codes and the generated text on the
GUI·
'
provide, via the GUI, a pop-up or dialog window in
response to input corresponding to at least some of the medical
procedures that were performed;
receive, from the user, information via the pop-up or
dialog window; and
display at least some of the information provided via the
pop-up or dialog window in the text input area of the GUI,
wherein the sequence of medical procedures corresponds
to surgery performed on the patient and the visual
representation displays a portion of a vascular system of the
human body, and
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wherein when highlighting the selected portions, the
instructions cause the at least one processor to highlight a path
in the displayed portion of the vascular system corresponding to
portions of the vascular system in which the surgery was
performed.
CITED REFERENCES
The Examiner relies upon the following references:
Dome us 5,325,293 June 28, 1994
Myers US 2004/0254816 Al Dec. 16, 2004
Kapit et al. US 2008/0004505 Al Jan.3,2008
(hereinafter "Kapit")
Finlay US 2008/0033759 Al Feb. 7,2008
REJECTIONS
I. Claims 1-6, 8-18, 20, and 22-24 are rejected under 35 U.S.C.
§ 101 as ineligible subject matter.
II. Claims 10-15, 17-20, 23, and 24 are rejected under 35 U.S.C.
§ I03(a) as unpatentable over Myers, Finlay, and Kapit. 2
III. Claim 16 is rejected under 35 U.S.C. § I03(a) as unpatentable
over Myers, Finlay, Kapit, and Dome.
2 Although the Final Office Action (page 5) states that "[c]laims 1--6, 8--15
and 17-20 are rejected under 35 U.S.C. I03(a)," the Final Office Action
(page 14) states that the rejection of claims 1-6, 8, 9, and 22 under 35 U.S.C.
§ I03(a) is withdrawn.
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Application 13/103,129
FINDINGS OF FACT
We rely upon and adopt the Examiner's findings stated in the Final
Office Action at pages 3-23 and the Answer3 at pages 3-30, except as stated
otherwise in the Analysis below. Additional findings of fact may appear in
the Analysis below.
ANALYSIS
Subject-Matter Eligibility
Applying the first step of the methodology delineated in Alice Corp.
Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347, 2355 (2014), the
rejection states:
The claims are directed to a series of steps or an
apparatus related to the providing a visual representation of a
healthcare procedure, which merely encompasses the abstract
ideas of comparing new and stored information and using rules
to identify options; and/or using categories to organize, store
and transmit information.
Final Action 3. Further, under the second Alice step, the claims do not
amount to significantly more than the abstract idea itself, because the
limitations are merely instructions to implement the abstract idea with
generic computer functions that are well-understood, routine, and
conventional. Id. 4
Disputing the rejection, the Appellants argue, as to the first step of the
Alice analysis:
[C]laim 1 includes features directed to outputting a graphical
user interface (GUI), receiving input via the GUI, highlighting
portions of the visual representation of a portion of a human
3 We refer, herein, to the Examiner's Answer dated July 6, 2016.
4 The rejection of claims 1---6, 8, 9, and 22 under 35 U.S.C. § 101 as being
directed to a transitory signal (Final Action 4) is withdrawn. See Answer 12.
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body on the GUI, and generating billing codes with respect to
medical procedures performed based on input received via the
GUI and generating text based on input received via the GUI.
Appeal Br. 10. The Appellants contend that this description does not
correspond to any abstract idea identified by courts or by the Office. Id. at
11. This argument is unpersuasive. Although the Appellants provide an
alternative characterization of claim 1, this alone does not identify an error
in the Examiner's determination that claim 1 is directed to an abstract idea.
Indeed, "[a]n abstract idea can generally be described at different levels of
abstraction." Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1239 (Fed. Cir.
2016).
Accordingly, we are also not persuaded by the Appellants' criticisms
(Reply Br. 5---6) 5 of the Examiner's comparison of claim 1 to concepts
identified by courts as constituting abstract ideas- i.e., comparing new and
stored information, using rules to identify options, and using categories to
organize, store, and transmit information (Answer 15). The Appellants
allege that the Examiner "has not addressed all the features of claim 1" and
has "improperly described the features at a high level of abstraction that is
impermissibly reductive and untethered from the actual claim language."
Reply Br. 5. As noted above, "different levels of abstraction" may be
employed properly, in the first Alice step. See Apple, Inc. v. Ameranth, Inc.,
842 F.3d at 1239. Therefore, any such characterization of a claim is apt to
be less detailed than the claim itself. Here, the Appellants do not explain
adequately why the Examiner's characterization of claim 1 is purportedly
defective.
5 We refer, herein, to the Reply Brief filed September 6, 2016.
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The Appellants also contend (see Appeal Br. 11-12) that claim 1 is
not directed to an abstract idea, because claim 1 is similar to the subject
matter of a claim (that is said to be non-abstract) from Example 23 of the
Office's July 2015 Examples, which were provided as guidance. The
referenced claim of Example 23, which is characterized as not being directed
to an abstract idea, involves dynamically re-sizing and relocating text on a
display screen. July 2015 Update Appendix 1: Examples (July 30, 2015),
pp. 7-9. Although the referenced claim of Example 23, like claim 1 in this
Appeal, relates to a display interface, the Appellants' argument is
unpersuasive because the Appellants do not explain how the non-abstract
character of the identified claim in Example 23 would apply to claim 1 in
this Appeal. See Answer 16.
The Appellants also argue that claim 1 would not threaten to
monopolize any basic tools of scientific and technological work, because
"there are many other ways to generate billing information and provide a
graphical representation of a surgery." Appeal Br. 12. According to the
Appellants, the withdrawal of obviousness rejections as to independent
claim 1 indicates that there is no preemption risk. Id. This argument is
unpersuasive, however, because "[ w ]hile preemption may signal patent
ineligible subject matter, the absence of complete preemption does not
demonstrate patent eligibility." Ariosa Diagnostics, Inc. v. Sequenom, Inc.,
788 F.3d 1371, 1379 (Fed. Cir. 2015).
Furthermore, the Appellants' position, to the effect that the lack of a
pending prior-art rejection of claim 1 signifies the absence of preemption
risk, is unpersuasive, because even a determination of novelty or
nonobviousness does not necessarily lead to the conclusion that subject
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matter is patent-eligible. "Groundbreaking, innovative, or even brilliant
discovery does not by itself satisfy the § 101 inquiry." Ass 'n for Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013).
Turning to the second Alice step, the Appellants contend that the
elements of claim 1 "taken as a whole" amount to significantly more than an
abstract idea itself. Appeal Br. 12. The Appellants go on to summarize
essentially the entirety of claim 1 and urge that "these features cannot be
reasonably construed to amount to mere instructions to apply an abstract
idea or a generic computer structure to perform generic computer functions
that are conventional activities known in the pertinent industry"; rather, the
"features of claim 1 provide a unique and interactive GUI configured to
receive input to automatically generate billing codes and text associated with
medical procedures, as well as provide a pop-up or dialog window to obtain
additional information." Id. at 13. Further, the Appellants contend that, like
claims held to be patent-eligible in DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245, 1257 (Fed. Cir. 2014), "claim l 'is necessarily rooted in
computer technology' in order to overcome a problem specifically arising in
the area of generating medical billing information and providing a graphical
output documenting a surgery." Appeal Br. 13. The Appellants also
contend that the features of claim 1, taken together as an ordered
combination, amount to significantly more than an abstract idea. Id. at 14.
See also Reply Br. 7-9. Yet, these arguments are unpersuasive, because the
Appellants do not identify (let alone provide any supporting explanation)
any additional elements of claim 1 that might - either individually or in an
ordered combination- amount to significantly more than the abstract idea
itself.
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Accordingly, we are not persuaded of error in the rejection of claim 1,
or claims 2---6, 8-18, 20, and 22-24- for which the Appellants rely upon
the same arguments (see Appeal Br. 15) - such that we sustain the rejection
of claims 1---6, 8-18, 20, and 22-24 under 35 U.S.C. § 101.
Obviousness
1. Claims 10---15, 17-20, 23, and 24
In one aspect, independent claim 10 recites:
receiving, by the computer device, input from a user via
the GUL the input selecting portions of the visual
representation and identifying a sequence of medical
procedures that were performed on a patient with respect to the
selected portions; [ and]
highlighting, simultaneously, by the computer device, the
selected portions of the visual representation, the highlighted
portions providing a graphical representation of the sequence of
medical procedures that were performed on the patient.
(Emphasis added).
The Appellants argue that claim 10 stands rejected erroneously,
because Kapit fails to teach or suggest the recited "receiving ... input from
a user via the GUI, the input selecting portions of the visual representation"
and "highlighting ... the selected portions of the visual representation."
Appeal Br. 18.
This argument is unpersuasive, because the rejection relies upon
Myers (not Kapit) to disclose input into a GUI by a user; Kapit is cited for
disclosing the highlighting of the GUI. See Answer 20.
Also, according to the Appellants, the selected portion of Kap it is
identified by an automated process ( employing natural language processing)
-not "via the GUI," as claimed. Appeal Br. 18-19. This argument, too, is
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unpersuasive, because Kapit discloses human input into the GUI that
determines the highlighting of particular features. Answer 21 ( citing Kapit
,r,r 69-70). (We note that the Examiner's description of a portion of Kapit
disclosing a human coder correcting system-generated errors by inputting
the correct information, appears to correspond to paragraph 71 of Kapit,
rather than paragraph 70.)
In another aspect, claim 10 recites: "automatically generating text, by
the computer device and based on input received via the GUI, identifying the
medical procedures that were performed" and "displaying, by the computer
device, the billing codes and the generated text on the GUI." The
Appellants' arguments, about whether the combination of teachings from the
references teach or suggest these features (see Appeal Br. 19-23), tum on
the Appellants' challenge to the reasons for combining the cited references:
In other words, the Final Office Action has parsed the
two features of automatically generating text and displaying the
billing codes and the generated text into totally unrelated
features and then pointed to portions of Myers and Finlay that
would not logically be combinable to somehow read on the
interdependent features recited in claim 10. That is, the
rejection amounts to a piecemeal analysis of the two features in
an attempt to allege that the features are obvious.
Id. at 20-21. Consequently, the Appellants also allege improper hindsight
reasoning in the rejection. Id. at 22-23. Further, the Appellants contend:
Each of these three references may be related to some
aspect of medical procedures. However, each reference is
clearly directed to different problems and goals and includes
different types of systems and methodologies to obtain the
desired results. As a result, one of ordinary skill in the art
would not have looked to combine features from Myers, Finlay
and Kapit without the benefit of the Appellants' specification.
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Id. at 24.
As an initial matter, the Appellants' remark that each of the references
is "directed to different problems and goals and includes different types of
systems and methodologies to obtain the desired results" (id.) does not
establish that "one of ordinary skill in the art would not have looked to
combine features from Myers, Finlay and Kapit without the benefit of the
Appellants' specification" (id.). The Appellants appear to be suggesting that
the references do not constitute art analogous to the claimed invention.
However, the analogous-art inquiry concerns whether the prior art at issue is
( 1) from the same field of endeavor as the claimed subject matter ( regardless
of the problem addressed), or (2) reasonably pertinent to the particular
problem with which the inventor is involved. See In re Bigio, 381 F.3d
1320, 1325 (Fed. Cir. 2004). The similarity of prior art references to each
other does not figure into an analogous-art challenge.
Moreover, as to the reasons for combining the references, the Final
Office Action points to explicit teachings in the references themselves as the
bases for combining them. With regard to Myers and Finlay, the Final
Office Action states:
It would have been obvious to one of ordinary skill in the
art at the time of the invention to combine the teachings of
Myers with the information manager for a procedure-based
medical practice of Finlay, because to do so would result in a
network-connected personal medical information and billing
system wherein by "presenting patient-specific user interfaces
for collecting pre-procedure data, aspects of the invention
provide a user with an efficient and logical way to plan and
record data relating to future procedures" and "by providing
patient-specific user interfaces for collecting post-procedure
execution, equipment, and billing data, aspects of the invention
provide a user with a way to collect and analyze data relating to
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procedures performed" thereby providing a more efficient and
convenient method of administering healthcare to patients
(Finlay, paragraph 4).
Final Action 7-8. Further, with regard to Myers and Kapit, the Final Office
Action states:
It would have been obvious to one of ordinary skill in the
art at the time of the invention to combine the teachings of
Myers with the method for medical coding of vascular
interventional radiology procedures of Kapit, because to do so
would result in a network-connected personal medical
information and billing system containing a graphical
anatomical interface wherein "[i]n addition to providing the
ability to review the medical report, the interface may list the
facts identified by the NLP [ natural language processing]
engine, and display a graphical vascular anatomy diagram that
acts as a reference for reviewing and updating the billing codes"
and the "GUI interface may also highlight the anatomical path
of the VasIR [ vascular interventional radiology] procedure,
providing a visual representation of any coding error caused by
a break in the path" so as to "advantageously assist a non-
physician human coder in understanding the medical report"
thereby providing a more complete, efficient and safer way of
providing healthcare to patients (Kapit, paragraph 11 ).
Id. at 8. Such reliance upon the teachings of the references being combined
may properly establish a reason to combine. See WMS Gaming Inc. v. Int 'l
Game Tech., 184 F.3d 1339, 1355 (Fed. Cir. 1999) ("The suggestion to
combine may be found in explicit or implicit teachings within the references
themselves, from the ordinary knowledge of those skilled in the art, or from
the nature of the problem to be solved.")
Accordingly, we are not persuaded by the Appellants' arguments
disputing the obviousness of independent claim 10, such that we sustain the
rejection of claim 10, as well as claims 11-15, 17-20, 23, and 24-as to
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which the Appellants rely upon the same arguments (see Appeal Br. 24--25)
-under 35 U.S.C. § 103(a).
2. Dependent Claim 16
Dependent claim 16 recites:
16. The method of claim 15, further comprising:
providing, via the GUI, a pop-up or dialog window in
response to selection of a particular one of the sequence
medical procedures that were performed, wherein the pop-up or
dialog window requests particular information from the user
based on the particular medical procedure;
receiving information, from the user, via the pop-up or
dialog window; and
displaying at least some of the information provided via
the pop-up or dialog window in the text input area of the GUI.
(Emphasis added).
In addition to the arguments discussed above (see Appeal Br. 25),
which apply to claims 10 and 15 (from which claim 16 depends), the
Appellants contend that claim 16 stands rejected erroneously, for several
reasons, which we address in tum.
The Appellants contend that the Examiner erred in rejecting claim 16,
because Myers does not teach or suggest that the recited "pop-up or dialog
window" is provided via Myers' GUI 1100, but is instead provided via the
checklist GUI shown in Myers' Figures 3G-3J. Appeal Br. 26 (citing Myers
,r 160). Further, the Appellants contend that Myers' paragraph 292 does not
disclose claim 16' s feature of being "provid[ ed] ... in response to selection
of a particular one of the sequence medical procedures that were
performed." See Reply Br. 15.
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These arguments are not persuasive, because the rejection explains
that Myers' paragraph 290 also teaches the features of "providing, via the
GUI, a pop-up or dialog window in response to selection of a particular one
of the sequence medical procedures that were performed" (Final Action 12)
and, in any event, the Examiner explains that different teachings of a
reference may be combined properly to show the obviousness of a recited
feature- as in the case of the rejection of claim 16:
The Office notes that the citations of the references are
with regard to a 103 obviousness rejection, not a 102
anticipation rejection. Accordingly, the Office is indicating that
the claims are obvious over a combination of references, not
anticipated by a single reference. Pursuant to this, it is
immaterial which GUI results in a pop-up, as the claims are
still rendered obvious over the cited art. The test for
obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the
primary reference; nor is it that the claimed invention must be
expressly suggested in any one or all of the references. Rather,
the test is what the combined teachings of the references would
have suggested to those of ordinary skill in the art. See In re
Keller, 642 F.2d 413,208 USPQ 871 (CCPA1981). Here the
combination of the references discloses all of the limitations as
claimed.
Answer 27-28 ( emphasis added).
The Appellants also assert error in the rejection of claim 16, because
Dome allegedly does not teach or suggest the recited "displaying at least
some of the information provided via the pop-up or dialog window in the
text input area of the GUI." Appeal Br. 26-27. According to the
Appellants, the cited portions of Dome (Figures 2B and 2G) merely disclose
the entry of user information and selecting a referring physician via various
input screens. Id. at 27.
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This argument is unpersuasive of error, because - although Dome's
Figures 2B and 2G do show screens of a computer application that permit
the entry of user information and selection of a referring physicians, these
portions of Dome nevertheless show the input of textual information in a
pop-up or dialog window (in Figure 2B) and, in Figure 2G, the display of at
least some of that information ( e.g., a patient name). See Answer 28.
Therefore, the rejection appropriately relies upon Dome for claim 16's
features of "displaying at least some of the information provided via the
pop-up or dialog window in the text input area of the GUI."
In addition, the Appellants argue that the rejection of claim 16 lacks
viable reasons to combine the identified teachings of the cited references.
See Appeal Br. 27-28.
The reason for combining Myers and Dome, as set forth in the
rejection of claim 16, states:
It would have been obvious to one of ordinary skill in the
art at the time of the invention to combine the teachings of
Myers with the method for correlating medical procedures and
medical billing codes of Dome, because to do so would result
in a network-connected personal medical information and
billing system that fills a need "for rapidly and simply
correlating CPT [Current Procedural Terminology] codes with
medical procedures performed during a patient examination
which does not require a thorough understanding of the
nomenclature used by the CPT coding system" thereby
providing a more effective and reliable way of providing
healthcare to patients.
Final Action 12 (quoting Dome, col. 3, 11. 11-15).
The Appellants argue that "it would not have been obvious to
combine Dome's screen with respect to entering patient demographic
information (Dome - Fig[ s]. 2B and 2G) with the GUI of Kapit, which
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displays portions of the vascular system, since the two screens have totally
different purposes." Appeal Br. 28. See also Reply Br. 16. The Appellants
further contend that the statement of a motivation to combine Myers and
Dome is "merely a conclusory statement providing an alleged benefit of the
combination." Id. at 27.
In response, the Examiner's Answer points out that "Dome's screen is
combined with the GUI from Myers, not Kapit" and, furthermore, "[b ]oth
the screen of Dome and the GUI of Myers are devoted to the input and
display of patient information. Accordingly, the screens have exactly
similar purposes." Answer 29. The Examiner's Answer also states:
Dome teaches that it would have been obvious to one of
ordinary skill in the art at the time of the invention to modify
the teachings of Myers directed to the prompting and receipt of
requested medical information through a GUI provided pop-up
or dialog window with Dome's display of information provided
via a pop-up or dialog window in a text input area of the GUI,
because to do so would result in a network-connected personal
medical information and billing system that displayed the most
important and relevant information through a GUI to a user
while the user is utilizing the system, thereby decreasing errors
related to the use of medical information and increasing patient
safety. For example, in Myers, the most relevant information is
requested, such as that related to the type/extent of medical
procedure. It would be helpful that such information would be
consistently displayed in a portion of the GUI dedicated to that
display, such as Dome discloses at Fig. 2G, where the system
displays the most relevant information, herein the patient's
name, received through a pop up or dialog window, in a portion
of the GUI dedicated to that display.
Id. at 30-31.
Thus, the Examiner's reason for combining Myers and Dome is based
explicitly on Dome's disclosure - which is proper, because a prior art
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reference may provide a reason to combine references. See WMS Gaming,
184 F.3d at 1355. Furthermore, as discussed above (regarding claim 10), the
similarity of prior art references to each other does not squarely address the
viability of an obviousness argument. Insofar as the Appellants might
regard references as non-analogous, a different showing is required- i.e.,
prior art is analogous if it is either from the same field of endeavor as the
claimed subject matter (regardless of the problem addressed), or reasonably
pertinent to the particular problem with which the inventor is involved. See
Bigio, 381 F.3d at 1325.
In view of the foregoing, the Appellants' arguments regarding the
rejection of claim 16 are not persuasive of error, such that we sustain the
rejection of claim 16 under 35 U.S.C. § 103(a).
DECISION
We AFFIRM the Examiner's decision rejecting claims 1---6, 8-18, 20,
and 22-24 under 35 U.S.C. § 101.
We AFFIRM the Examiner's decision rejecting claims 10-20, 23, and
24 under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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