Ex Parte Bergh

Patent Trial and Appeal Board

Feb 19, 2016

12412434 (P.T.A.B. Feb. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/412,434 0312712009
23908 7590 02/23/2016
RENNER OTTO BOISSELLE & SKLAR, LLP
1621 EUCLID AVENUE
NINETEENTH FLOOR
CLEVELAND, OH 44115
FIRST NAMED INVENTOR
Cecilia Bergh
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.
HINZP0112US 7033
EXAMINER
KANAAN, MAROUN P
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
02/23/2016 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):
ipdocket@rennerotto.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CECILIA BERGH
Appeal2013-008053 1
Application 12/412,4342
Technology Center 3600
Before NINA L. MEDLOCK, KENNETH G. SCHOPPER, and
AMEE A. SHAH, Administrative Patent Judges.
SHAH, Administrative Patent Judge.
DECISION ON APPEAL
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
final rejection of claims 1--4, 6-8, 11-13, and 15-17. We have jurisdiction
under 35 U.S.C. § 6(b ).
We REVERSE.
1 Throughout this opinion, we refer to the Reply Brief ("Reply Br.," filed
Mar. 29, 2013), the Appeal Brief ("Appeal Br.," filed July 5, 2012), the
Examiner's Answer ("Ans.," mailed Feb. 22, 2013), the Final Action ("Final
Act.," mailed Sept. 16, 2011), and the Specification ("Spec.," filed Mar. 27,
2009).
2 According to the Appellant, the real party in interest is Mandometer AB.
App. Br. 2.
Appeal2013-008053
Application 12/412,434
STATEMENT OF THE CASE
The Appellant's invention is directed to "a method, generator device,
computer program product and system for generating medical advice."
Spec. p. 1, 11. 10-11.
Independent claim 1, which we reproduce below, is illustrative of the
subject matter on appeal:
1. A method for generating personalized medical advice
regarding an eating behaviour through a questionnaire session
between a medical advisor and a person seeking answers to the
eating behaviour through an Internet portal, comprising the steps
of:
using a system having an Internet portal to request
personal data, from a person who has logged onto the portal by
way of an input unit, the personal data including the person's
current emotional state of mind, and the requesting step causing
the person to indicate the person's current emotional state by
means of an onscreen emotional meter having a range scale;
registering said personal data in a first storage whenever
the personal data is entered by the person;
receiving an eating behaviour query from the person by
means of the Internet portal;
searching a second storage containing health-related data
using said query, in order to retrieve a matching response based
on a weighted and normalized n-gram similarity function;
modifying the matching response using said personal data
as well as a person's history of interaction with the system to
generate a modified matching response; and providing the
modified matching response via the Internet portal for display on
a display associated with the input unit.
Appeal Br. 27, Claims App.
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Appeal2013-008053
Application 12/412,434
REJECTIONS
Claims 1--4, 6, 7, and 15-17 stand rejected under 35 U.S.C. § 101 as
being directed to ineligible subject matter. Final Act. 2.
Claims 1--4, 6-8, 11-13, and 15-17 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Nadas (US 2009/0043608 Al, pub.
Feb. 12, 2009), Soll (US 2010/0198755 Al, pub. Aug. 5, 2010), and
Krishnan (US 2007/0192143 Al, pub. Aug. 16, 2007). Final Act. 4.
ANALYSIS
35 u.s.c. § 101
The Examiner rejects claims 1--4, 6, 7, and 15-17 as directed to an
abstract idea and thus non-statutory subject matter. Final Act. 2. The
Examiner finds the claims contain no recitation of a machine or
transformation, insufficient recitation of a machine or transformation, are not
directed to an application of a law of nature, and are a mere statement of a
general concept. Id. at 2-3, citing Bilski v. Kappas, 561 U.S. 593 (2010).
We agree with the Appellant that the Examiner has failed to provide a
fully developed prima facie case to show the claims are directed to an
abstract idea. See Appeal Br. 6-7, Reply Br. 2. The Examiner states that
the claims are directed to an abstract idea and recites the factors to be
considered in determining whether a claim is directed to non-statutory
subject matter (Final Act. 2-3), but provides insufficient analysis as to how
the factors apply to the claims in determining whether the claims at issue are
directed to a non-statutory abstract idea.
Thus, we do not sustain the Examiner's rejection of claims 1--4, 6, 7,
and 15-17 under 35 U.S.C. § 101.
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Appeal2013-008053
Application 12/412,434
35 u.s.c. § 103
The Appellant contends, in pertinent part, that the Examiner's
rejection of independent claim 1 is in error because the combination of
Nadas, Soll, and Krishnan does not disclose the limitation of "searching a
second storage containing health-related data using said query, in order to
retrieve a matching response based on a weighted and normalized n-gram
similarity function." See Appeal Br. 10-13, Reply Br. 4--5. Specifically, the
Appellant argues the "learning function of Krishnan simply is not a
weighted and normalized n-gram similarity function and thus Krishnan does
not make up for the deficiency of Nadas." Appeal Br. 13.
The Examiner finds that Nadas discloses "searching a second storage
containing health-related data using said query (Para. 63) in order to receive
a matching response based on weighted and normalized n-gram similarity
function (Para. 68)," but does not teach an n-gram similarity function. Final
Act. 5. The Examiner finds that "Krishnan in paragraph 3 8 teaches 'new
element extraction algorithms', i.e. n-gram similarity function[, and] in
paragraph 97[,] teaches 'using a maximum likelihood estimation or
probabilistic inference methods'." Ans. 4; see also Final Act. 5. The
Examiner concludes it would have been obvious to one of ordinary skill in
the art "to combine the medication management system as taught in Nadas
(Para. 7) ... with the mining and editing medical related quality metric
information as taught in Krishnan (Para. 9)," because the combination
"would lead to an enhanced method where a user can edit the measures to
allow for a better quality report as taught in Krishnan (Para. 9)." Final Act.
5.
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Appeal2013-008053
Application 12/412,434
The Specification defines an n-gram as "a type of probabilistic model
for predicting the next item in a sequence. N-grams per se are known and
are used in genetic sequence analysis for instance. Herein, we refer to an n-
gram as a sub-sequence of n items from a given sequence." Spec. p. 9,
11. 28-32.
We agree with the Appellant that the Examiner has not shown by a
preponderance of evidence that either the "new element extraction
algorithms" or the "estimation or probabilistic inference methods" of
Krishnan (Ans. 4; see also Krishnan i-fi-138, 96-100) is a sub-sequence ofn
items from a given sequence. Appeal Br. 12-13. Krishnan discloses
extracting information from a computerized patient record using, in part,
natural language processing (Fig. 3), combining all the information, and
drawing inferences from the combinations. Krishnan i138, Fig. 3. When a
user edits the record, the processor modifies a quality metric based on the
edit. Id. at i-fi-192-94. "The processor 102 may implement a learning
function for a quality metric as a function of the change request. The
processor 102 may be able to learn from editing and automatically adapt to
improve future performance." Id. at i196. Thus, the processor infers what
other metric to change based on the edit using previous edits and
probabilistic inference methods. See id. at i-fi-1 96-100. The Examiner does
not explain, and one of ordinary skill in the art would not understand, how
the learning function and inferences of Krishnan use a sub-sequence of a
number of items from a given sequence.
For this reason, we do not sustain the rejection of claim 1.
Independent claim 8 recites a similar limitation (see Appeal Br. 21, 28), and
thus we do not sustain the rejection of claim 8 for the same reason. We also
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Appeal2013-008053
Application 12/412,434
do not sustain the rejections of claims 2-7, 11-13, and 15-17, each of which
ultimately depends from one of independent claims 1 and 8. Cf In re Fritch,
972 F.2d. 1260, 1266 (Fed. Cir. 1992) ("dependent claims are nonobvious if
the independent claims from which they depend are nonobvious").
DECISION
The Examiner's decision rejecting claims 1--4, 6, 7, and 15-17 under
35 U.S.C. § 101 (a) is REVERSED.
The Examiner's decision rejecting claims 1--4, 6-8, 11-13, and 15-17
under 35 U.S.C. § 103 (a) is REVERSED.
REVERSED
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