Ex Parte Attanapola et al

Patent Trials and Appeals Board

Jun 28, 2019

14997675 - (D) (P.T.A.B. Jun. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/997,675 01/18/2016
45725 7590 07/01/2019
Walder Intellectual Property Law PC
1701 N. Collins Blvd.
Suite 2100
Richardson, TX 75080
FIRST NAMED INVENTOR
Kasun L. Attanapola
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.
CA920150101 US 1 7637
EXAMINER
SEREBOFF, NEAL
ART UNIT PAPER NUMBER
3626
MAIL DATE DELIVERY MODE
07/01/2019 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte KASUN L. ATTANAPOLA, KATHERINE D. CHENGLI,
PERRY R. GIFFEN, SUKHWINDER LALL, MIHAELA ROTARU,
and LEILA SADAT REZAI
Appeal2018-005031
Application 14/997,675 1
Technology Center 3600
Before ERIC S. FRAHM, JENNIFER L. McKEOWN, and
CATHERINE SHIANG, Administrative Patent Judges.
SHIANG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1, 2, 6-9, 13-16, and 20, which are all the claims pending
and rejected in the application. We have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
1 Appellants identify International Business Machines Corporation as the
real party in interest. App. Br. 2.
Appeal2018-005031
Application 14/997,675
STATEMENT OF THE CASE
Introduction
The present invention relates to "an improved data processing
apparatus and method and more specifically to mechanisms for generating
healthcare work item recommendations based on predictive analytics."
Spec. ,r 1. Claim 1 is exemplary:
1. A method, in a data processing system comprising a
processor and a memory, wherein the memory stores
instructions for configuring the processor to implement an
analytics engine and a decision system for generating healthcare
work item recommendations based on predictive analytics, the
method comprising:
performing, by the analytics engine executing on the
processor of the data processing system and configured with
one or more predictive models, analytics to discover patterns in
patient records data, to generate one or more risk scores using
the one or more predictive models based on a set of attributes in
the patient records data and the discovered patterns in the
patient records data, wherein each of the one or more risk
scores represents a probability of a respective healthcare
consideration, and to identify for each of the one or more risk
scores an associated set of contributing factors, wherein the set
of contributing factors is a subset of the set of attributes that
contribute to the risk score;
generating, by the decision system executing on the
processor of the data processing system, a healthcare
recommendation for a given patient having a given risk score
based on the given risk score, a predictive model used to
generate the given risk score, and a set of mapping rules that
link contributing factors to healthcare providers; and
queuing, by the decision system executing on the
processor of the data processing system, at least one work item
for at least one selected healthcare provider based on the
healthcare recommendation.
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Application 14/997,675
References and Re} ections2
Claims 1, 2, 6-9, 13-16, and 20 are rejected under 35 U.S.C. § 101
because they are directed to patent-ineligible subject matter. Final Act. 4--8.
Claims 1, 2, 6-9, 13-16, and 20 are rejected under 35 U.S.C. § 103 as
being obvious over Haber (US 2015/0112710 Al, published Apr. 23, 2015)
and Eder (US 2012/0010867 Al, published Jan. 12, 2012). Final Act. 8-13.
ANALYSIS
35 U.S.C. § 101
We have reviewed the Examiner's rejection in light of Appellants'
contentions and the evidence of record. We concur with Appellants'
contention that the Examiner erred in this case.
Section 101 of the Patent Act provides "[ w ]hoever 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. However, the Supreme Court has long interpreted
35 U.S.C. § 101 to include implicit exceptions: "[l]aws of nature, natural
phenomena, and abstract ideas" are not patentable. E.g., Alice Corp. Pty.
Ltd. v. CLS Banklnt'l, 573 U.S. 208,216 (2014) (internal quotation marks
and citation omitted).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
2 Throughout this opinion, we refer to the (1) Final Office Action dated Feb.
8, 2017 ("Final Act."); (2) Appeal Brief dated July 5, 2017 ("App. Br."); (3)
Examiner's Answer dated Feb. 13, 2018 ("Ans."), and (4) Reply Brief dated
Apr. 13, 2018 ("App. Br.").
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and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
we first determine what concept the claim is "directed to." See Alice, 573
U.S. at 219 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
Concepts determined to be abstract ideas, and, thus, patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 191
(1981) ); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267---68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 187; see also id. at 191 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
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protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. (citing Benson and Flook); see, e.g., id. at 187 ("It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a
patent-eligible application." Alice, 573 U.S. at 221 ( citation omitted). "A
claim that recites an abstract idea must include 'additional features' to
ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."' Id. ( quoting Mayo, 566 U.S. at 77).
"[M]erely requir[ing] generic computer implementation[] fail[ s] to transform
that abstract idea into a patent-eligible invention." Id.
The PTO recently published revised guidance on the application of
§ 101. USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (Jan. 7, 2019) ("Guidance"). Under the Guidance, we first
look to whether the claim recites:
( 1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes) (Step 2A, Prong 1 ); and
(2) additional elements that integrate the judicial exception into
a practical application (see MANUAL OF PATENT EXAMINING
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PROCEDURE ("MPEP") § 2106.05(a}-(c), (e}-(h)) (9th Ed., Rev.
08.2017, 2018) (Step 2A, Prong 2).
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not "well-understood, routine, conventional" in the field (see
MPEP § 2106.05(d)); or
( 4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception. (Step 2B.)
See Guidance, 84 Fed. Reg. at 54--56.
Even if claim 1 recites an abstract idea, the Federal Circuit explains
the "directed to" inquiry is not simply asking whether the claims involve a
patent-ineligible concept:
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-after all, they take place in the physical world.
See Mayo, 132 S.Ct. at 1293 ("For all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural
phenomena, or abstract ideas."). 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."
Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016); see
also Diehr, 450 U.S. at 188 ("In determining the eligibility of respondents'
claimed process for patent protection under § 101, their claims must be
considered as a whole."); McRO, Inc. v. Bandai Namco Games Am. Inc., 837
F.3d 1299, 1314 (Fed. Cir. 2016) (the question is whether the claims as a
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whole "focus on a specific means or method that improves the relevant
technology or are instead directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery").
Therefore, we proceed to Step 2A, Prong 2 of the Guidance to
determine whether additional elements of the claim integrate the abstract
idea into a practical application. Such additional elements may reflect an
improvement to a technology or technical field. See Guidance, 84 Fed. Reg.
at 55. We determine additional elements of claim 1 integrate the abstract
idea into a practical application, as the additional elements ("in a data
processing system comprising a processor and a memory, wherein the
memory stores instructions for configuring the processor to implement an
analytics engine and a decision system for generating healthcare work item
recommendations based on predictive analytics"; "performing, by the
analytics engine executing on the processor of the data processing system
and configured with one or more predictive models, analytics to discover
patterns in patient records data, to generate one or more risk scores using the
one or more predictive models based on a set of attributes in the patient
records data and the discovered patterns in the patient records data"; and
"generating, by the decision system executing on the processor of the data
processing system, a healthcare recommendation for a given patient having a
given risk score based on the given risk score, a predictive model used to
generate the given risk score, and a set of mapping rules that link
contributing factors to healthcare providers") reflect technology
improvement of implementing a medical analytics engine and system based
on predictive analytics. See claim 1; see also BASCOM Glob. Internet
Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016)
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("The inventive concept described and claimed ... is the installation of a
filtering tool at a specific location, remote from the end-users, with
customizable filtering features specific to each end user. This design gives
the filtering tool both the benefits of a filter on a local computer and the
benefits of a filter on the ISP server.").
In particular, the technology improvement is directed to implementing
an analytics engine configured with one or more predictive models and a
decision system for generating healthcare work item recommendations based
on predictive analytics, performing by the analytics engine analytics to
discover patterns in patient records data, generating risk scores using the
predictive models based on a set of attributes in the patient records data and
the discovered patterns in the patient records data, and generating by the
decision system a healthcare recommendation for a given patient with a risk
score based on the risk score, a predictive model used to generate the risk
score, and a set of mapping rules that link contributing factors to healthcare
providers.
Our determination is supported by the Specification, which describes
the technology improvement of the invented medical analytics engine and
system based on predictive analytics:
With a system for making health care recommendations
for patients, it is imperative that the system organizes how work
items are distributed among healthcare providers and orders the
work items accordingly. With the rise of big data and analytics,
predictive models may predict the risk of disease recurrence or
hospital readmission. These predictive models would then he
capable of outputting risk lists. Although predictive models are
useful, if the results are all aggregated in one place, the
different healthcare providers easily can be overwhelmed with
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Application 14/997,675
the amount of information and the number of tasks in the work
lists.
The illustrative embodiments provide a mechanism for
generating work item recommendations using predictive
models and taking into account contributing factors of risk
scores provided by the predictive models. The mechanism
categorizes and distributes work items to the appropriate
healthcare providers based on a predicted risk score, the
predictive model used to generate the risk score, and the factors
contributing to the predicted risk score.
Spec. ,r,r 12-13.
Because the additional elements of claim 1 integrate the abstract
idea into a practical application, we determine claim 1 is not directed to an
abstract idea. See Guidance, Step 2A, Prong 2. For similar reasons, each
of claims 2, 6-9, 13-16, and 20 integrates the sales activities into a
practical application, and is not directed to an abstract idea.
Therefore, we reverse the rejection of claims 1, 2, 6-9, 13-16, and 20
under 35 U.S.C. § 101.
35 U.S.C.§ 103
We have reviewed the Examiner's rejection in light of Appellants'
contentions and evidence of record. We concur with Appellants' contention
that the Examiner erred in finding the cited portions of Haber teach "identify
for each of the one or more risk scores an associated set of contributing
factors, wherein the set of contributing factors is a subset of the set of
attributes that contribute to the risk score" as recited in independent claim 1.
See App. Br. 21-23.
The Examiner cites Haber's paragraphs 73 and 118 for teaching the
above claim limitation. See Final Act. 9. In response to Appellants'
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arguments, the Examiner cites paragraph 47 of the Specification (Ans. 12),
but does not adequately explain why that paragraph supports the Examiner's
finding.
We have reviewed the cited Haber portions, and they do not describe
"identify for each of the one or more risk scores an associated set of
contributing factors, wherein the set of contributing factors is a subset of the
set of attributes that contribute to the risk score" as required by claim 1. In
particular, while the cited Haber portions mention "risk variable scores,"
they do not describe identifying an associated set of contributing factors.
Because the Examiner fails to provide sufficient evidence or
explanation to support the rejection, we are constrained by the record to
reverse the Examiner's rejection of claim 1.
Each of independent claims 8 and 15 recites a similar limitation, and
Examiner applies the same findings and conclusions discussed above to
claims 8 and 15. See claims 8 and 15; Final Act. 12-13. Therefore, for
similar reasons, we reverse the Examiner's rejection of independent claims 8
and 15.
We also reverse the Examiner's rejection of corresponding dependent
claims 2, 6, 7, 9, 13, 14, 16, and 22.
DECISION
We reverse the Examiner's decision rejecting claims 1, 2, 6-9, 13-16,
and 20 under 35 U.S.C. § 101.
We reverse the Examiner's decision rejecting claims 1, 2, 6-9, 13-16,
and 20 under 35 U.S.C. § 103.
REVERSED
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