Ex Parte Boroczky et al

Patent Trial and Appeal Board

May 21, 2018

13993419 (P.T.A.B. May. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/993,419 06/12/2013 Lilla Boroczky
24737 7590 05/23/2018
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.
2010P01174WOUS 1087
EXAMINER
RAYYAN, SUSANF
ART UNIT PAPER NUMBER
2167
NOTIFICATION DATE DELIVERY MODE
05/23/2018 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 LILLA BOROCZKY, MARK R SIMPSON, YE XU,
and MICHAEL CHUN-CHIER LEE
Appeal2017-010594
Application 13/993,419
Technology Center 2100
Before JUSTIN BUSCH, JOHN P. PINKERTON, and JASON M. REPKO,
Administrative Patent Judges.
BUSCH, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants appeal from the
Examiner's decision to reject claims 1-3, 9-14, 20, 21, 23, and 24, which
constitute all the claims pending in this application. We have jurisdiction
over the pending claims under 35 U.S.C. § 6(b). Claims 4--8, 15-19, and 22
were canceled previously. We affirm.
CLAIMED SUBJECT MATTER
Appellants' invention is generally directed to systems for analyzing
previous patients' data sets, displaying a subset of the previous patients' data
sets, and generating a treatment plan based on similarities between previous
patients' data sets and a current patient's data set. Spec. 1:20-2:8, 4:19-
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5:24. Claims 1 and 12 are independent claims. Claim 1 is illustrative and
reproduced below:
1. A non-transitory computer-readable storage medium
storing a set of instructions executable by a processor, the set of
instructions being operable to:
receive a current patient set of data relating to a current
patient;
compare the current patient set of data to a plurality of
previous patient sets of data, each of the previous patient sets of
data corresponding to a previous patient;
select a plurality of the previous patient sets of data based
on a level of similarity between the selected plurality of previous
patient sets of data and the current patient set of data;
rank the plurality of the previous patient sets of data based
on the level of similarity between the selected plurality of
previous patient sets of data and the current patient set of data;
display at least one of the plurality of selected previous
patient sets of data to a user based on the ranking; and
generate a treatment plan based on corresponding
treatment plans of the subset of the plurality of selected previous
patient data sets.
REJECTIONS
Claims 1-3, 9-14, 20, 21, 23, and 24 stand rejected under 35 U.S.C.
§ 101 as being directed to ineligible subject matter. Final Act. 2-3.
Claims 1-3, 9, 12-14, 20, 23, and 24 stand rejected under 35 U.S.C.
§ I02(b) as anticipated by Frielinghaus (US 2007/0156453 Al; July 5,
2007). Final Act. 4--10.
Claims 10, 11, and 21 stand rejected under 35 U.S.C. § I03(a) as
obvious in view ofFrielinghaus and Takahashi (US 2009/0129658 Al; May
21, 2009). Final Act. 12-13.
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ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments that the Examiner erred. In reaching this decision, we have
considered all evidence presented and all arguments Appellants made.
Arguments Appellants could have made, but chose not to make in the Briefs,
are deemed waived. See id.
THE§ 101 REJECTION
The Examiner concludes claims 1-3, 9-14, 20, 21, 23, and 24 are
directed to judicially excepted subject matter. Final Act. 2-3; Ans. 9-15. In
particular, the Examiner finds the claims are directed to merely comparing
and organizing information and the recited steps involve concepts similar to
those previously identified by courts as abstract. Final Act. 2 ( citing
SmartGene, Inc. v. Advanced Biological Labs., SA, 555 F. App'x 950 (Fed.
Cir. 2014) (unpublished)); Ans. 11. The Examiner also concludes the
particular elements recited in the claims impose insufficient meaningful
limitations to transform the abstract idea into patent-eligible subject matter.
Final Act. 2-3; Ans. 11-13. Appellants argue the§ 101 rejection of all
claims as a group. See App. Br. 10-14; Reply Br. 6-11. Accordingly, we
select independent claim 1 as representative and decide the appeal of the
§ 101 rejection based on claim 1. 37 C.F.R. § 4I.37(c)(l)(iv).
Alice/Mayo Framework
The Patent Act defines patent-eligible subject matter broadly:
"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
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requirements of this title." 35 U.S.C. § 101. There is no dispute that claims
1-3, 9-14, 20, 21, 23, and 24 are directed to one of these categories.
In Mayo Collaborative Services v. Prometheus Laboratories, Inc.,
566 U.S. 66, 70 (2012) and Alice Corp. Pty. Ltd. v. CLS Bank International,
134 S. Ct. 2347, 2354 (2014), the Supreme Court explained that§ 101
"contains an important implicit exception" for laws of nature, natural
phenomena, and abstract ideas. See Diamond v. Diehr, 450 U.S. 175, 185
(1981 ). In Mayo and Alice, the Court set forth a two-step analytical
framework for evaluating patent-eligible subject matter: (1) "determine
whether the claims at issue are directed to" a patent-ineligible concept, such
as an abstract idea; and, if so, (2) "consider the elements of each claim both
individually and 'as an ordered combination' to determine whether the
additional elements" add enough to transform the "nature of the claim" into
"significantly more" than a patent-ineligible concept. Alice, 134 S. Ct.
at 2355 (quoting Mayo, 566 U.S. at 79); see Affinity Labs of Tex., LLC v.
DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016).
Step one in the Mayol Alice framework involves looking at the "focus"
of the claims at issue and their "character as a whole." Elec. Power Grp.,
LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). Step two
involves the search for an "inventive concept." Alice, 134 S. Ct. at 2355;
Elec. Power, 830 F.3d at 1353. For an inventive concept, "more is required
than 'well-understood, routine, conventional activity already engaged in"'
by the relevant community. Rapid Litig. Mgmt. Ltd. v. CellzDirect, Inc.,
827 F.3d 1042, 1047 (Fed. Cir. 2016) (quoting Mayo, 566 U.S. at 79-80).
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Step One of Alice Framework
Turning to step one of the Alice framework, the Examiner finds the
claims merely recite steps involved in collecting, analyzing, and displaying
information and, therefore, the claims are directed to an abstract idea. Final
Act. 2-3. The Examiner finds the claims are more similar to the claims
found ineligible by the Federal Circuit in Electric Power and SmartGene
than the claims found eligible in Google LLC v. Network-I Techs., Inc.,
CBM 2015-00113, slip op. (PTAB Oct. 19, 2015). Ans. 13-15.
Specifically, the Examiner finds SmartGene 's recited expert rules are the
same as, and provide the same results as, Appellants' claimed similarities.
Final Act. 2; Ans. 11.
Appellants argue their claims are not similar to the claims in
SmartGene and, accordingly, the Examiner erred in determining that
Appellants' claims are directed to an abstract idea. App. Br. 10-12 (citing
Memorandum from the Deputy Comm'r for Patent Examination Policy at
the U.S. Patent and Trademark Office on Recent Subject Matter Eligibility
Decisions 2, 4 (Nov. 2, 2016)). In particular, Appellants contend their
claims are different from those in SmartGene because Appellants' claims
determine a level of similarity between data sets, which is different than
SmartGene 's claims, which used rules to identify options. App. Br. 10-11.
Appellants further argue their claims are directed to "a computer-
aided diagnostic and treatment system" that "provide[ s] a particular solution
to the problem of providing sufficient information to overcome a
practitioner's skepticism of using computer-generated treatment plans."
App. Br. 12; App. Br. 14 (arguing their "invention substantially improves
the technology of computer-aided medical diagnostics" because it provides a
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greater knowledge base than available to an individual practitioner).
Appellants assert their claims, which select previous patients' data sets that
are similar to a current patient's data set, are more like the claims in Google
LLC v. Network-I Techs., Inc., CBM 2015-00113, slip op. at 4 (PTAB Oct.
19, 2015), which the Board found were necessarily rooted in computer
technology based on the recitation of a particular correlation process for
locating "a close but not necessarily exact match." App. Br. 12-13 (quoting
Google, slip op. at 13); Reply Br. 7-11. Appellants further assert their
claims, like those in Google, "cannot be performed by a human in any
reasonable amount of time." Reply Br. 8.
We agree with the Examiner that claim 1, as a whole, is directed to
collecting, analyzing, and displaying information. Ans. 12. Specifically,
claim 1 recites collecting ("receive a current patient data set" and implicitly
receive the recited "previous patient sets of data"), analyzing ( comparing the
current patient data to previous patients' data, selecting and ranking a subset
of the previous patients' data identified as similar to the current patient data,
and generating a treatment plan based on the selected subset of data), and
displaying (displaying some of the previous patients' data) information. The
Federal Circuit has "treated collecting information, including when limited
to particular content (which does not change its character as information), as
within the realm of abstract ideas." Elec. Power, 830 F.3d at 1353-54
( emphasis added) ( finding collecting, analyzing, and displaying information,
regardless of particular content, is an abstract idea); Content Extraction, 776
F.3d at 1347 (finding collecting, recognizing, and storing information is an
abstract idea); Digitech, 758 F.3d at 1350 ("The method in the '415 patent
claims an abstract idea because it describes a process of organizing
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information through mathematical correlations and is not tied to a specific
structure or machine" ( emphasis added)); see also Internet Patents Corp. v.
Active Network, Inc., 790 F.3d 1343, 1348--49 (Fed. Cir. 2015); OIP Techs.,
Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015). Although
claim 1 limits the information to current and previous patient data, the
particular content of the data manipulated does not change the nature of the
claim.
Contrary to Appellants' assertions, the character of the claims as a
whole is related to filtering patient data sets to identify and rank patient data
sets similar to a current patient's data in order to provide a recommended
treatment plan. Accepting Appellants' characterization of their invention,
claim 1 provides a "solution to the problem of providing sufficient
information to overcome a practitioner's skepticism of using computer-
generated treatment plans" and "improves the technology of computer-aided
medical diagnostics" by providing a greater knowledge base than available
to an individual practitioner. App. Br. 12, 14. Accordingly, the claims
allegedly solve a business problem (i.e., a practitioner trusting data) by
providing the practitioner the underlying data that resulted in the suggested
treatment plan. This problem and solution do not improve computer
capabilities, but rather merely use computer technology as a tool to help sift
through data (the purpose of computer databases and search methodologies).
See Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed.
Cir. 2016) ( explaining that Alice's first step "asks whether the focus of the
claims is on the specific asserted improvement in computer capabilities (i.e.,
the self-referential table for a computer database) or, instead, on a process
that qualifies as an 'abstract idea' for which computers are invoked merely
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as a tool"). Moreover, simply using a computer to do what was previously
done manually does not add significantly more to the abstract idea. See
Bancorp Servs. LLC v. Sun Life Assurance Co. of Canada, 687 F.3d 1266,
1279 (Fed. Cir. 2012) ("the computer simply performs more efficiently what
could otherwise be accomplished manually").
For the above reasons, we are unpersuaded the Examiner erred in
concluding the claims are directed to an abstract idea.
Step Two of Alice Framework
Next, we tum to step two of Alice to determine whether the
limitations, when considered both "individually and 'as an ordered
combination"' contain an "inventive concept" sufficient to transform the
claimed "abstract idea" into a patent-eligible application. Alice, 134 S. Ct. at
2355-58. The Examiner concludes the particular elements recited in the
claims impose insufficient meaningful limitations to transform the abstract
idea into patent-eligible subject matter. Final Act. 2-3; Ans. 11-13.
Appellants primarily argue only that the claims are not directed to an
abstract idea. See App. Br. 10-14; Reply Br. 6-11. To the extent
Appellants argue their claims recite significantly more than the abstract idea
itself because claim 1 identifies "similar" data sets rather than using rules to
find exact matches, see App. Br. 11-13; Reply Br. 8-11, we are unpersuaded
by such arguments. Appellants' claims merely recite comparing a first data
set with other data sets, selecting and ranking a plurality of the other data
sets based on their "level of similarity" to the first data set, displaying at
least one of the selected plurality of other data sets, and generating a
treatment plan based on the selected other data sets. Claim 1 's "level of
similarity" is broad enough to encompass any comparison that can
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distinguish between how similar a first data set is to other data sets. For
example, claim 1 encompasses a system that selects and ranks data sets
based on how many fields have values in the first data set that exactly match
the fields' values in the other data sets.
Moreover, as discussed above, Appellants' claim 1 merely recites the
routine use of a conventional computer to automate a practitioner's well-
known, conventional, and routine steps for analyzing patient data and
generating a treatment plan. See Enfzsh, 822 F.3d at 1335-36 ("[T]he first
step ... asks whether the focus of the claims is 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."); Bancorp, 687 F.3d at 1279; OIP Techs., 788 F.3d at 1363
("[R ]elying on a computer to perform routine tasks more quickly or more
accurately is insufficient to render a claim patent eligible."); see also
Intellectual Ventures I LLC v. Capital One Bank, 792 F.3d 1363, 1370 (Fed.
Cir. 2015) ("[O]ur precedent is clear that merely adding computer
functionality to increase the speed or efficiency of the process does not
confer patent eligibility on an otherwise abstract idea."); see also Alice, 134
S. Ct. at 2358-59. Here, the focus of the claims is not on an improvement in
computers as tools or upon an innovative way to use computers or other
devices, but is focused on an independently abstract idea that uses generic
and routine steps as tools.
Neither the fact that the recited process and systems can more
efficiently perform a human process nor the ability to display the data
underlying the ultimate suggested treatment improves a computer or
technology, but rather improves the process itself. See Gottschalk v. Benson,
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409 U.S. 63, 66 (1972) (explaining that the claimed steps could easily "be
carried out in existing computers long in use, no new machinery being
necessary."). Accordingly, the claimed limitations, considered both
individually and together, do not add significantly more to the abstract idea
and, therefore, do not render the subject matter patent eligible.
Summary
For the above reasons, Appellants have not persuaded us the
Examiner erred in rejecting claims 1-3, 9-14, 1 7, 18, 2 0, 21, 2 3, and 24
under 35 U.S.C. § 101 as being directed to merely an abstract idea, rendering
the claimed subject matter ineligible.
THE§§ 102 AND 103 REJECTIONS
The "display ... previous patient sets of data" Step
The Examiner finds Frielinghaus discloses every limitation recited in
claims 1-3, 9, 12-14, 20, 23, and 24. Final Act. 4--10 (citing Frielinghaus
,r,r 7, 21, 22, 28, 31, 38, 46, 52-54, 56). The Examiner further finds
Frielinghaus discloses every limitation recited in claims 10, 11, and 21,
except for the particular metrics used for determining the similarity between
patient data sets, which the Examiner finds Takahashi teaches. Final
Act. 12-13 ( citing Takahashi ,r 56).
Of particular note with respect to the independent claims, the
Examiner finds Frielinghaus' s provision of "data corresponding to results of
[the] treatment plan ( of the selected previous sets of data ... to the medical
personnel and/or patient," which includes probabilities," discloses the
recited displaying step. Final Act. 5; Ans. 5. The Examiner further finds
Frielinghaus analyzes prior patient information, analyzes current patient data
relative to prior patients' data, provides a treatment plan or plans based on
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the analysis, and reports probabilities to the medical personnel or patient.
Ans. 5 (citing Frielinghaus ,r,r 53, 54, Fig 4 (items 56, 58, 60)). The
Examiner finds "[t]he data selected corresponds to the previous patient data
including treatment plans and results of previous patents," and the "data is
provided to the medical personnel and therefore displayed for the use in
treatment planning." Ans. 6.
Appellants contend Frielinghaus is like other prior art systems, which
provide "no information regarding the prior patient's set of data that lead to
the system's determination that the prior patient's set of data was
substantially similar to the current patient's set of data." App. Br. 7.
Appellants assert Frielinghaus merely informs a user of a similarity score
and does not disclose the prior patient's data. Id. Appellants further argue
"neither a reported treatment plan (58, 72) nor reported probabilities (60, 74)
correspond to a set of prior patient's data." Reply Br. 3.
Claims 9 and 20
Claims 9 and 20 depend directly from independent claims 1 and 12,
respectively. Claims 9 and 20 recite additional limitations relating to
copying first and second elements from two different previous patients'
treatment plans wherein the second element relates to a current patient's
attribute that is similar to the corresponding attribute of the second previous
patient but different than the corresponding attribute of the first previous
patient. The Examiner finds Frielinghaus's paragraph 56 discloses these
additional limitations. Final Act. 7, 10 ( citing Frielinghaus ,r 56); Ans. 8
( citing Frielinghaus ,r,r 23-24, 54, 56, Abstract).
Appellants argue the Examiner has not demonstrated Frielinghaus
discloses the additional limitations recited in dependent claims 9 and 20.
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App. Br. 8-9; Reply Br. 5. In particular, Appellants assert Frielinghaus
merely discloses creating a second treatment plan for a current patient based
in part on the results of the first treatment plan selected. App. Br. 9.
Appellants argue Frielinghuas' s disclosure of a second treatment plan based
on the current patient's post-treatment data does not disclose copying a first
element for one previous patient's treatment plan and a second element from
another previous patient's treatment plan. App. Br. 9. Appellants also assert
Frielinghaus fails to disclose that the second element copied to the current
patient's treatment plan relates to a current patient's attribute that is similar
to the corresponding attribute of the previous patient from whose treatment
plan the second element was taken but is different than the corresponding
attribute of the previous patient from whose treatment plan the first element
was taken. App. Br. 9; Reply Br. 5.
The Examiner responds to Appellants' arguments by explaining how
Frielinghaus's system works. Ans. 8 (citing Frielinghaus ,r,r 23-24, 54, 56,
Abstract). Specifically, the Examiner finds Frielinghaus discloses analyzing
prior patient data and outputting a first treatment plan to medical personnel,
collecting data after performing the first treatment, and creating a second
treatment plan using a different treatment option than used in the first
treatment plan. Ans. 8 ( citing Frielinghaus ,r,r 23-24, 54, 56, Abstract).
In both the Final Action and the Answer the Examiner fails to identify
sufficiently what aspect of Frielinghaus allegedly discloses the recited
second element relates to an attribute of the current patient that is both
different than a corresponding attribute of a first previous patient (from
whose treatment plan the recited first element was copied) and similar to a
corresponding attribute of a second previous patient ( from whose treatment
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plan the second element was copied). Accordingly, we are persuaded the
Examiner erred in rejecting claims 9 and 20 as anticipated by Frielinghaus.
Summary
For the reasons discussed above, we are not persuaded the Examiner
erred in rejecting independent claims 1 and 12, and claims 2, 3, 13, 14, 23,
and 24, which depend therefrom, as anticipated by Frielinghaus, but we are
persuaded the Examiner erred in rejecting dependent claims 9 and 20 as
anticipated by Frielinghaus. Claims 10 and 21 depend directly from claims
1 and 12, respectively, and claim 11 depends from claim 10. Appellants do
not separately argue the patentability of claims 10, 11, and 21 with
particularity. See App. Br. 10. Accordingly, we are not persuaded the
Examiner erred in rejecting claims 10, 11, and 21 as obvious in view of
Frielinghaus and Takahashi for the same reasons discussed with respect to
claims 1 and 12.
DECISION
We affirm the Examiner's decision to reject claims 1-3, 9-14, and
20-24 as directed to ineligible subject matter under 35 U.S.C. § 101.
We affirm the Examiner's decision to reject claims 1-3, 12-14, 23,
and 24 under 35 U.S.C. § 102(b) as anticipated by Frielinghaus.
We reverse the Examiner's decision to reject claims 9 and 20 under
35 U.S.C. § 102(b) as anticipated by Frielinghaus.
We affirm the Examiner's decision to reject claims 10, 11, and 12
under 35 U.S.C. § 103(a) as obvious in view of Frielinghaus and Takahashi.
Because we affirm at least one ground of rejection with respect to
each claim on appeal, the Examiner's decision is affirmed. See 37 C.F.R.
§ 4I.50(a)(l).
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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