Ex Parte Alsafadi

Patent Trial and Appeal Board

Aug 21, 2018

11573466 (P.T.A.B. Aug. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
11/573,466 02/09/2007 Yasser Alsafadi
24737 7590 08/23/2018
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus A venue
Suite 340
Valhalla, NY 10595
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.
2004P01466WOUS 1892
EXAMINER
NGUYEN, HIEP VAN
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
08/23/2018 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):
patti. demichele@Philips.com
marianne.fox@philips.com
katelyn.mulroy@philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte Y AS SER ALSAF ADI
Appeal2017-003997
Application 11/573,466
Technology Center 3600
Before BIBHU R. MOHANTY, MICHAEL C. ASTORINO, and CYNTHIA
L. MURPHY, Administrative Patent Judges.
MOHANTY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant seeks our review under 35 U.S.C. § 134 of the final
rejection of claims 1, 3-10, 12-17, 19, and 20 which are all the claims
pending in the application. We have jurisdiction under 35 U.S.C. § 6(b ).
SUMMARY OF THE DECISION
We AFFIRM.
Appeal2017-003997
Application 11/573,466
THE INVENTION
The Appellants' claimed invention is directed to a system and method
for configuring clinical care settings for a patient according to clinical
guidelines (Spec. 1 :3-5). Claim 1, reproduced below, is representative of
the subject matter on appeal.
1. A method for configuring a clinical care setting for a
patient, the method comprising:
retrieving, by a computer processor, a clinical guideline
prescribed for the patient, wherein the retrieving includes,
obtaining an identification of the patient by scanning a
unique user identification code,
retrieving a data record of the patient based on the patient
identification, and
determining the clinical guideline prescribed for the
patient based on the patient record;
determining, by the computer processor, a care setting
configuration based on the retrieved clinical guideline;
comparing, by the computer processor, the determined
care setting configuration with a current care setting
configuration of the patient; and
generating and proposing, by the computer processor, an
alternate care setting if the determined care setting
configuration does not match the current care setting
configuration of the patient, wherein the proposing step further
includes,
generating a work order for required equipment based on
the determined configuration, and
generating a purchase order for the required equipment if
the required equipment is not available within a clinical facility.
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Application 11/573,466
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Schlotterbeck et al.
Limousin et al.
Yurko et al.
Nichols et al.
US 2004/0128162 Al
US 2002/0169651 Al
US 2003/0208465 Al
US 6,961,448 B2
The following rejections are before us for review:
Mar. 14, 2000
Nov. 14, 2002
Nov. 6, 2003
Nov. 1, 2005
1. Claims 1, 3-10, 12-17, 19, and 20 are rejected under
35 U.S.C. § 101 as being directed to non-statutory subject matter.
2. Claims 1, 3-5, 7-10, 12-17, 19, and 20 are rejected under
35 U.S.C. § I03(a) as unpatentable over Schlotterbeck, Yurko, and
Limousin.
3. Claim 6 is rejected under 35 U.S.C. § I03(a) as unpatentable
over Schlotterbeck, Yurko, Limousin, and Nichols.
FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence 1.
1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
( explaining the general evidentiary standard for proceedings before the
Patent Office).
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Appeal2017-003997
Application 11/573,466
ANALYSIS
Rejection under 35 USC§ 101
The Appellant argues that the rejection of claim 1 is improper because
the rejection has not shown the claim to be an abstract idea (App. Br. 4--12,
Reply Br. 2, 3). The Appellant also argues the claim is "significantly more"
than an alleged abstract idea (App. Br. 12-16, Reply Br. 2---6).
In contrast, the Examiner has determined that the rejection is proper
(Final Rej. 2--4, Ans. 2-4, 15-18).
We agree with the Examiner. Under 35 U.S.C. § 101, an invention is
patent-eligible if it claims a "new and useful process, machine, manufacture,
or composition of matter." 35 U.S.C. § 101. The Supreme Court, however,
has long interpreted § 101 to include an implicit exception: "laws of nature,
natural phenomena, and abstract ideas" are not patentable. See, e.g., Alice
Corp. Pty Ltd. v. CLS Bank Int 'l, 134 S. Ct. 2347, 2354 (2014).
In judging whether claim 1 falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court's two-
step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296-97
(2012)). In accordance with that framework, we first determine whether the
claim is "directed to" a patent-ineligible abstract idea. If so, we then
consider the elements of the claim both individually and as "an ordered
combination" to determine whether the additional elements "transform the
nature of the claim" into a patent-eligible application of the abstract idea. Id.
This is a search for an "inventive concept" an element or combination of
elements sufficient to ensure that the claim amounts to "significantly more"
than the abstract idea itself. Id. The Court also stated that "the mere
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Appeal2017-003997
Application 11/573,466
recitation of a generic computer cannot transform a patent-ineligible abstract
idea into a patent-eligible invention." Id. at 2358.
Here, we determine that the claim is directed to the concept of
determining if a clinical guideline for a patient matches a care setting and
generating a work order if it does not. This is method of organizing human
activities and is an abstract idea beyond the scope of§ 101. See Electric
Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016) where
collecting information, analyzing it, and displaying results from certain
results of the collection and analysis was held to be an abstract idea. See
also In re Meyer, 688 F.2d 789, 795-96 (CCP A 1982), which held that "a
mental process that a neurologist should follow" when testing a patient for
nervous system malfunctions was not patentable. The preamble for the
claim is directed to "configuring a clinical care setting for a patient." The
Specification states that the claim is directed to a system and method for
configuring clinical care settings per patient according to clinical guidelines
(Spec. 1:3-5).
We next consider whether additional elements of the claim, both
individually and as an ordered combination, transform the nature of the
claim into a patent-eligible application of the abstract idea, e.g., whether the
claim does more than simply instruct the practitioner to implement the
abstract idea using generic computer components. We conclude that it does
not.
Considering each of the claim elements in tum, the function
performed by the computer system at each step of the process is purely
conventional. Each step of the claimed method does no more than require a
generic computer to perform a generic computer function. In this regard, the
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Appeal2017-003997
Application 11/573,466
Specification describes s using generic components in a conventional
manner for their known functions. See, e.g., Spec. 5.
For these above reasons the rejection of claim 1 is sustained. The
remaining claims are directed to similar subject matter and the rejection of
these claims is sustained for the reasons given above as well.
Rejection under 35 US.C. § 103(a)
The Appellant argues that the rejection of claim 1 is improper because
the cited prior art does not disclose the claim limitation for "generating and
proposing by the computer processor, an alternate care setting" (App. Br.
16-22).
In contrast, the Examiner has determined that the cited claim
limitation is shown at Schlotterbeck at paras. 41, 42, and 46 (Ans. 6, 18, and
19).
We agree with the Appellant. Schlotterbeck at para. 41 does disclose
analyzing institutional guidelines and an infusion parameter. Schlotterbeck
at para. 42 discloses a "verification stage" in which the infusion parameter is
compared against a stored drug library, but there is no specific proposal of
"an alternate care setting" as claimed. Schlotterbeck at para. 46 fails to
disclose this as well. For these reasons the rejection of claim 1 and its
dependent claims is not sustained. The remaining claims contain a similar
limitation and the rejection of these claims is not sustained as well.
CONCLUSIONS OF LAW
We conclude that Appellant has not shown that the Examiner erred in
rejecting claims 1, 3-10, 12-17, 19, and 20 under 35 U.S.C. § 101.
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Application 11/573,466
We conclude that Appellant has shown that the Examiner erred in
rejecting claims 1, 3-5, 7-10, 12-17, 19, and 20 under 35 U.S.C. § 103(a) as
unpatentable over Schlotterbeck, Yurko, and Limousin.
We conclude that Appellant has shown that the Examiner erred in
rejecting claim 6 under 35 U.S.C. § 103(a) as unpatentable over
Schlotterbeck, Yurko, Limousin, and Nichols.
DECISION
The Examiner's rejection of claims 1, 3-10, 12-17, 19, and 20 is
sustained.
AFFIRMED
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