Ex Parte Buisman et al

Patent Trials and Appeals Board

Jun 27, 2019

13509312 - (D) (P.T.A.B. Jun. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/509,312 05/11/2012 Harm Jacob Buisman
24737 7590 07/01/2019
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.
2009P01547WOUS 7561
EXAMINER
TOMASZEWSKI, MICHAEL
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
07/01/2019 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 HARM JACOB BUISMAN, ALEKSANDRA
TESANOVIC, and ROB THEODORUS UDINK1
Appeal 2018-001819
Application 13/509,312
Technology Center 3600
Before JENNIFER S. BISK, LARRY J. HUME, and
JULIET MITCHELL DIRBA, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Non-
Final Rejection of claims 1-8, 10, and 15-18, which are all of the claims
pending in the application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Koninklijke Philips
Electronics N.V. App. Br. 2.
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Application 13/509,312
STATEMENT OF THE CASE2
The Invention
Appellants' disclosed embodiments and claimed invention "relate[] to
patient monitoring systems, in particular a patient monitoring system for
determining a health coaching parameter." Spec. 1, 11. 1-2.
Exemplary Claims
Claim 16, reproduced below, is representative of the subject matter on
appeal:
16. A patient coaching method, the method being
implemented using one or more processors of a patient
monitoring system comprising a diagnostic medical device
attached to a patient and a user interface, the method
compnsmg:
using, based on a current value of a health coaching
parameter associated with a patient, a first template related to a
treatment for the patient to construct content for presentation to
the patient;
providing the constructed content for presentation to the
patient via the user interface and, in response, obtain one or
more responses of the patient via the user interface;
periodically measuring the vital sign[3J of the patient via
the patient-attached diagnostic medical device;
2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed
Aug. 29, 2017); Reply Brief ("Reply Br.," filed Dec. 12, 2017); Examiner's
Answer ("Ans.," mailed Nov. 3, 2017); Non-Final Office Action ("Non-
Final Act.," mailed Sept. 9, 2016); and the original Specification ("Spec.,"
filed May 11, 2012) (claiming benefit of US Provisional Application
No. 61/261,436, filed Nov. 16, 2009).
3 We note that there appears to be insufficient antecedent basis for this
italicized limitation in the claim. In the event of further prosecution, we
leave it to the Examiner to determine whether claim 16 meets the
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obtaining, based on the periodic measurements,
measurement values of the vital sign of the patient; and
modifying, based on the measurement values, the current
value of the health coaching parameter, the modification
subsequently causing a second template related to the treatment
for the patient to be used to construct subsequent content for
presentation to the patient.
Rejections on Appeal
Claims 1-8, 10, and 15-18 stand rejected under 35 U.S.C. § 101 as
being directed to patent-ineligible subject matter. Non-Final Act. 2.
CLAIM GROUPING
Based on Appellants' arguments (App. Br. 6-17) and our discretion
under 37 C.F.R. § 41.37(c)(l)(iv), we decide the appeal of patent-ineligible
subject matter rejection of claims 1-8, 10, and 15-18 on the basis of
representative claim 16. 4
definiteness requirements of 35 U.S.C. § 112, second paragraph. Although
the Board is authorized to reject claims under 37 C.F.R. § 41.50(b), no
inference should be drawn when the Board elects not to do so. See Manual
of Patent Examining Procedure (MPEP) § 1213.02.
4 "Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately." 37 C.F.R. § 41.37( c )(1 )(iv).
In addition, when Appellants do not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
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ISSUE
Appellants argue (App. Br. 6; Reply Br. 2) the Examiner's rejection of
claim 16 under 35 U.S.C. § 101 as being directed to patent-ineligible subject
matter is in error. These contentions present us with the following issue:
Under the USPTO's Revised Guidance, informed by our governing
case law concerning 35 U.S.C. § 101, is claim 16 patent-ineligible under
§ 101?
PRINCIPLES OF LAW
A. 35 U.S.C. § 101
"Eligibility under 35 U.S.C. § 101 is a question of law, based on
underlying facts." SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1166
(Fed. Cir. 2018).
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.5
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. Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 70 (2012) (brackets in original) (citing Diamond v. Diehr,
450 U.S. 175, 185 (1981)).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
5 This threshold analysis of whether a claim is directed to one of the four
statutory categories of invention, i.e., a process, machine, manufacture, or
composition of matter, is referred to as "Step l" in the USPTO's patent-
eligibility analysis under § 101. MPEP § 2106.
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and Alice. Alice Corp. v. CLS Banklnt'l, 573 U.S. 208, 217-18 (2014)
( citing Mayo, 566 U.S. at 75-77). 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" (Diehr, 450 U.S. at 191); "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 "[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. ( citation omitted) ( 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.").
Abstract ideas may include, but are not limited to, fundamental
economic practices, methods of organizing human activities, and
mathematical formulas or relationships. Alice, 573 U.S. at 217-21. Under
this guidance, we must therefore ensure at step one that we articulate what
the claims are directed to with enough specificity to ensure the step one
inquiry is meaningful. Id. at 217 ("[W]e tread carefully in construing this
exclusionary principle lest it swallow all of patent law.").
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. (alterations in original) (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.
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B. USPTO Revised Guidance
The PTO recently published revised guidance in the Federal Register
concerning the application of§ 101. 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50 (January 7, 2019) (hereinafter
"Revised Guidance") (https ://www. govinfo. gov/ content/pkg/FR-2019-01-
07/pdf/2018-28282.pdf).
Under the Revised 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); 6 and
(2) additional elements that integrate the judicial
exception into a practical application (see Manual for Patent
Examining Procedure ("MPEP") §§ 2106.05(a)-(c), (e)-(h)). 7
See Revised Guidance 52-53.
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
6 Referred to as "Revised Step 2A, Prong l" in the Revised Guidance
(hereinafter "Step 2A(i)").
7 Referred to as "Revised Step 2A, Prong 2" in the Revised Guidance
(hereinafter "Step 2A(ii)").
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(4) simply appends well-understood, routine,
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial exception. 8
See Revised Guidance 56.
Step 2A(i) ~ Abstract Idea
Informed by our judicial precedent, the Revised Guidance extracts and
synthesizes key concepts identified by the courts as abstract ideas to explain
that the abstract idea exception includes the following groupings of subject
matter, when recited as such in a claim limitation:
(a) Mathematical concepts-mathematical relationships,
mathematical formulas or equations, mathematical calculations;
(b) Certain methods of organizing human activity-
fundamental economic principles or practices (including
hedging, insurance, mitigating risk); commercial or legal
interactions (including agreements in the form of contracts;
legal obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior or
relationships or interactions between people (including social
activities, teaching, and following rules or instructions); and
( c) Mental processes-concepts performed in the human
mind (including an observation, evaluation, judgment, opinion).
Under the Revised Guidance, if the claim does not recite a judicial
exception (a law of nature, natural phenomenon, or subject matter within the
enumerated groupings of abstract ideas above), then the claim is patent-
8 Items (3) and (4) continue to be collectively referred to as "Step 2B" of the
Supreme Court's two-step framework, described in Mayo and Alice.
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eligible at Step 2A(i). This determination concludes the eligibility analysis,
except in situations identified in the Revised Guidance. 9
However, if the claim recites a judicial exception (i.e., an abstract idea
enumerated above, a law of nature, or a natural phenomenon), the claim
requires further analysis for a practical application of the judicial exception
in Step 2A(ii).
Step 2A(ii) - Practical Application
If a claim recites a judicial exception in Step 2A (i), we determine
whether the recited judicial exception is integrated into a practical
application of that exception in Step 2A(ii) by: (a) identifying whether there
are any additional elements recited in the claim beyond the judicial
exception( s ); and (b) evaluating those additional elements individually and
in combination to determine whether they integrate the exception into a
practical application.
The seven identified "practical application" sections of the MPEP, 10
cited in the Revised Guidance under Step 2A(ii), are:
9 In the rare circumstance in which an Examiner believes a claim limitation
that does not fall within the enumerated groupings of abstract ideas should
nonetheless be treated as reciting an abstract idea, the procedure described in
of the Guidance for analyzing the claim should be followed. See Revised
Guidance, Section III.C.
10 See MPEP §§ 2106.05(a)-(c), (e)-(h). Citations to the MPEP herein refer
to revision [R-08.2017]. Sections 2106.05(a), (b), (c), and (e) are indicative
of integration into a practical application, while§§ 2106.05([), (g), and (h)
relate to limitations that are not indicative of integration into a practical
application.
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(1) MPEP § 2106.05(a) Improvements to the Functioning of
a Computer or To Any Other Technology or Technical
Field
(2) MPEP § 2106.05(b) Particular Machine
(3) MPEP § 2106.05(c) Particular Transformation
(4) MPEP § 2106.05(e) Other Meaningful Limitations
(5) MPEP § 2106.05(±) Mere Instructions To Apply An
Exception
(6) MPEP § 2106.05(g) Insignificant Extra-Solution Activity
(7) MPEP § 2106.05(h) Field of Use and Technological
Environment
See Revised Guidance 55.
If the recited judicial exception is integrated into a practical
application as determined under one or more of the MPEP sections cited
above, then the claim is not directed to the judicial exception, and the patent-
eligibility inquiry ends. See Revised Guidance 54. If not, then analysis
proceeds to Step 2B.
Step 2B ~ "Inventive Concept" or "Significantly More"
Under our reviewing courts' precedent, it is possible that a claim that
does not "integrate" a recited judicial exception under Step 2A(ii) is
nonetheless patent eligible. For example, the claim may recite additional
elements that render the claim patent eligible even though a judicial
exception is recited in a separate claim element. 11 The Federal Circuit has
held claims eligible at the second step of the Alice/Mayo test (US PTO Step
2B) because the additional elements recited in the claims provided
"significantly more" than the recited judicial exception (e.g., because the
11 See, e.g., Diehr, 450 U.S. at 187.
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additional elements were unconventional in combination). 12 Therefore, if a
claim has been determined to be directed to a judicial exception under
Revised Step 2A, we must also evaluate the additional elements individually
and in combination under Step 2B to determine whether they provide an
inventive concept (i.e., whether the additional elements amount to
significantly more than the exception itself). 13
Under the Revised Guidance, we must consider in Step 2B whether an
additional element or combination of elements: (1) "Adds a specific
limitation or combination of limitations that are not well-understood,
routine, conventional activity in the field, which is indicative that an
inventive concept may be present;" or (2) "simply appends well-understood,
routine, conventional activities previously known to the industry, specified
at a high level of generality, to the judicial exception, which is indicative
that an inventive concept may not be present." See Revised Guidance,
III.B. 14
12 See, e.g., Amdocs (Israel), Ltd. v. Openet Telecom, Inc., 841 F.3d 1288,
1300, 1304 (Fed. Cir. 2016); BASCOM Global Internet Services, Inc. v.
AT&T Mobility LLC, 827 F.3d 1341, 1349-52 (Fed. Cir. 2016); DDR
Holdings v. Hotels.com, L.P., 773 F.3d 1245, 1257-59 (Fed. Cir. 2014).
13 The patent eligibility inquiry may contain underlying issues of fact.
Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325
(Fed. Cir. 2016). In particular, "[t]he question of whether a claim element or
combination of elements is well-understood, routine and conventional to a
skilled artisan in the relevant field is a question of fact." Berkheimer v. HP
Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018).
14 In accordance with existing Step 2B guidance, an Examiner's finding that
an additional element ( or combination of elements) is well understood,
routine, conventional activity must be supported with at least one of the four
specific types of evidence required by the USPTO Berkheimer
Memorandum, as shown above. For more information concerning evaluation
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In the Step 2B analysis, an additional element ( or combination of
elements) is not well-understood, routine or conventional unless the
examiner finds an evidentiary basis, and expressly supports a rejection in
writing with, one or more of the following:
1. A citation to an express statement in the
specification or to a statement made by an applicant during
prosecution that demonstrates the well-understood, routine,
conventional nature of the additional element(s) ....
2. A citation to one or more of the court decisions
discussed in MPEP § 2106.0S(d)(II) as noting the well-
understood, routine, conventional nature of the additional
element( s ).
3. A citation to a publication that demonstrates the
well-understood, routine, conventional nature of the additional
element( s ) ....
4. A statement that the examiner is taking official
notice of the well-understood, routine, conventional nature of
the additional element(s) ....
See Berkheimer Memo.
The analysis in Step 2B further determines whether an additional
element or combination of elements:
(a) Adds a specific limitation or combination of
limitations that are not well-understood, routine, conventional
activity in the field, which is indicative that an inventive
concept may be present; or
of well-understood, routine, conventional activity, see MPEP § 2106.0S(d),
as modified by the USPTO Berkheimer Memorandum (USPTO
Commissioner for Patents Memorandum dated Apr. 19, 2018, "Changes in
Examination Procedure Pertaining to Subject Matter Eligibility, Recent
Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.)" (hereinafter
"Berkheimer Memo").
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(b) simply appends well-understood, routine,
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial exception,
which is indicative that an inventive concept may not be
present.
Revised Guidance, and see Berkheimer Memo.
If the Examiner or the Board determines under Step 2B that the
element ( or combination of elements) amounts to significantly more than the
exception itself, the claim is eligible, thereby concluding the eligibility
analysis.
However, if a determination is made that the element and combination
of elements does not amount to significantly more than the exception itself,
the claim is ineligible under Step 2B, and the claim should be rejected for
lack of subject matter eligibility.
ANALYSIS
Step 1 - Statutory Category
Claim 16, as a method (process) claim, recites one of the enumerated
categories of eligible subject matter in 35 U.S.C. § 101. Therefore, the issue
before us is whether it is directed to a judicial exception without
significantly more.
Step 2A(i): Does the Claim Recite a Judicial Exception?
The Examiner determined claim 16 is directed to "an idea of itself."
Non-Final Act. 5. The Examiner also concluded "the claimed invention
could be performed with pen and paper and/or in the human mind." Ans. 7.
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We conclude claim 16 does not recite the judicial exceptions of either
natural phenomena or laws of nature. We evaluate, de nova, whether
claim 16 recites an abstract idea based upon the Revised Guidance.
Claim 16 recites, in pertinent part, "[a] patient coaching method," that
includes the steps of:
(1) "[U]sing, based on a current value of a health
coaching parameter associated with a patient, a first template
related to a treatment for the patient to construct content for
presentation to the patient."
(2) "[P]roviding the constructed content for presentation
to the patient ... and, in response, obtain[ing] one or more
responses of the patient."
(3) "[P]eriodically measuring the vital sign of the
patient."
(4) "[O]btaining, based on the periodic measurements,
measurement values of the vital sign of the patient."
(5) "[M]odifying, based on the measurement values, the
current value of the health coaching parameter, the modification
subsequently causing a second template related to the treatment
for the patient to be used to construct subsequent content for
presentation to the patient."
Claims App 'x.
The Specification provides context as to what the claimed invention is
directed to. In this case, the Specification discloses that the invention
"relates to patient monitoring systems, in particular a patient monitoring
system for determining a health coaching parameter." Spec. 1.
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Appellants' Abstract further describes the invention as:
A patient monitoring system for determining a health
coaching parameter of a patient, the patient monitoring system
comprising: A. a health professional user interface; B. a patient
user interface; C. a patient database comprising an electronic
health record belonging to the patient; D. a domain model
comprising a knowledge base for a medical condition; E. a
template database comprising at least one template form for
constructing at least one question and possible responses to the
at least one question about the medical condition using the
domain model, wherein the at least one template form
comprises a mapping for each of the possible responses to
determine a value for the health coaching parameter; F. a
computing device comprising: at least one processor, memory,
and one or more programs; wherein the one or more programs
are stored in memory and configured to be executed by the one
or more processors; wherein the one or more programs
comprise instructions for: - receiving a request for a health
coaching parameter from the health professional user interface;
- retrieving the knowledge base for the medical condition; -
constructing the at least one question and the possible responses
using the knowledge base and the at least one template form; -
receiving a response from the patient user interface; -
determining the value for the health coaching parameter using
the response and the mapping; - recording the value of the
health coaching parameter in the electronic health record; -
selecting a subset of the knowledge using the response; and -
providing the patient with the subset of the knowledge base
using the patient user interface.
Abstract.
We conclude that claim 16 recites mental processes that may also be
performed by pen and paper. This type of activity, i.e., patient monitoring
and coaching, as recited in each of limitations ( 1) through ( 5), for example,
includes longstanding conduct that existed well before the advent of
computers and the Internet, and could be carried out by a human with pen
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and paper. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
13 7 5 (Fed. Cir. 2011) ("That purely mental processes can be unpatentable,
even when performed by a computer, was precisely the holding of the
Supreme Court in Gottschalk v. Benson."). 15
Under the broadest reasonable interpretation standard, 16 we conclude
limitations ( 1) through ( 5) recite steps that would ordinarily occur when
carrying out functions relating to patient monitoring and coaching. See Non-
Final Act. 2-3. For example, constructing content based on a current value
of a vital sign for presentation to the patient, periodically re-measuring the
vital sign, modifying the current value based on the periodically re-measured
15 Our reviewing court recognizes that "[ a ]n abstract idea can generally be
described at different levels of abstraction." Apple, Inc. v. Ameranth, Inc.,
842 F.3d 1229, 1240 (Fed. Cir. 2016). That need not and, in this case does
not, "impact the patentability analysis." Id. at 1241. Further, "[t]he Board's
slight revision of its abstract idea analysis does not impact the patentability
analysis." Id. Moreover, merely combining several abstract ideas does not
render the combination any less abstract. RecogniCorp, LLC v. Nintendo
Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017) ("Adding one abstract idea (math)
to another abstract idea ... does not render the claim non-abstract."); see
also FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed.
Cir. 2016) ( determining the pending claims were directed to a combination
of abstract ideas).
16 During prosecution, claims must be given their broadest reasonable
interpretation when reading claim language in light of the specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard,
we interpret claim terms using "the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant's specification." In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997).
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value of the vital sign, and constructing subsequent content for presentation
to the patient based upon the modification are operations that generally are
carried out during patient monitoring and coaching over a period of time,
whether initiated person-to-person, on paper, or using a computer.
With respect to this step of the analysis, Appellants argue:
[T]he question of whether a claimed invention is patent-
eligible cannot be based on whether it is possible for a human
to perform the claimed invention .... [T]he claimed invention
is patent-eligible for reasons similar to why the McRo claims
are patent-eligible-it "uses specific []rules in a process
specifically designed to achieve an improved technological
result in conventional industry practice."
Reply Br. 8-9 (underlining in original).
In response, we note the claims in McRO were held not to be abstract
because they recited a "specific ... improvement in computer animation"
using "unconventional rules that relate[ d] sub-sequences of phonemes,
timings, and morph weight sets." McRO, Inc. v. Bandai Namco Games Am.
Inc., 837 F.3d 1299, 1302-03, 1307-08, 1314-15 (Fed. Cir. 2016).
Appellants' claim 16 concerns a method for computer-based patient
monitoring and coaching. See Spec. 1 et seq. Appellants, however, do not
direct us to any evidence that the claimed "using," "providing,"
"periodically measuring," "obtaining," and "modifying" steps correspond to
unconventional rules.
Thus, under Step 2A(i), we agree with the Examiner that claim 16's
method for patient coaching is a concept that can be performed in the human
mind, including observations, evaluations, judgments, and rendering
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opinions. We conclude claim 16, under our Revised Guidance, recites a
judicial exception of mental processes, and thus is an abstract idea.
Step 2A(ii): Judicial Exception Integrated into a Practical Application?
If the claims are directed to a patent-ineligible concept, as we
conclude above, we proceed to the "practical application" Step 2A(ii) in
which we determine whether the recited judicial exception is integrated into
a practical application of that exception by: (a) identifying whether there are
any additional elements recited in the claim beyond the judicial exception(s);
and (b) evaluating those additional elements individually and in combination
to determine whether they integrate the exception into a practical
application.
We find each of the limitations of claim 16 recite abstract idea as
identified in Step 2A(i), supra, and none of the limitations integrate the
judicial exception of the abstract idea, i.e., a mental process, into a practical
application as determined under one or more of the MPEP sections cited
above. Claim 16 as a whole merely uses a computer as a tool to perform the
abstract idea.
Appellants argue:
[T]he Examiner failed to consider that the claimed
solution as a whole involves a particular ordered combination
of operations to provide a particular useful application that
improves another technology or technical field (e.g., patient
monitoring systems) by dynamically constructing and providing
content for presentation to a patient based on a patient-attached
diagnostic medical device's periodical measurements of a vital
sign of the patient .... In this way, the claimed solution can
improve a patient monitoring system by dynamically
constructing and providing content for presentation to a patient.
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App. Br. 6 ( emphasis added).
In response, we do not identify any limitations separate from the
abstract ideas recited in the limitations identified in Step 2A(i), supra, of
claim 16 which improve the underlying technology of patient monitoring
systems. In particular, as concluded above, the steps of "using,"
"providing," "periodically measuring," "obtaining," and "modifying" may
be categorized as mental processes as contained in the Revised Guidance.
Accordingly, we conclude the recited judicial exception is not integrated into
a practical application as determined under one or more of the MPEP
sections cited above, such that the claim is directed to the judicial exception.
Thus, on this record, Appellants have not shown an improvement or
practical application under the guidance of Manual of Patent Examining
Procedure section 2106.05(a) ("Improvements to the Functioning of a
Computer or to Any Other Technology or Technical Field") or section
2106.05( e) ("Other Meaningful Limitations"). Nor do Appellants advance
any arguments in the Briefs that are directed to the Bilski machine-or-
transformation test, which would only be applicable to the method (process)
claims on appeal. See MPEP §§ 2106.05(b) (Particular Machine) and
2106.05( c) (Particular Transformation).
Therefore, we conclude the abstract idea is not integrated into a
practical application, and thus the claim 16 is directed to the judicial
exception.
Step 2B ~ "Inventive Concept" or "Significantly More"
If the claims are directed to a patent-ineligible concept, as we
conclude above, we proceed to the "inventive concept" step. For Step 2B we
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must "look with more specificity at what the claim elements add, in order to
determine 'whether they identify an "inventive concept" in the application of
the ineligible subject matter' to which the claim is directed." Affinity Labs
of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1258 (Fed. Cir. 2016)
(quoting Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed.
Cir. 2016)).
In applying step two of the Alice analysis, our reviewing court guides
we must "determine whether the claims do significantly more than simply
describe [the] abstract method" and thus transform the abstract idea into
patentable subject matter. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709,
715 (Fed. Cir. 2014). We look to see whether there are any "additional
features" in the claims that constitute an "inventive concept," thereby
rendering the claims eligible for patenting even if they are directed to an
abstract idea. Alice, 573 U.S. at 221. Those "additional features" must be
more than "well-understood, routine, conventional activity." Mayo, 566
U.S. at 79.
Limitations referenced in Alice that are not enough to qualify as
"significantly more" when recited in a claim with an abstract idea include, as
non-limiting or non-exclusive examples: adding the words "apply it" ( or an
equivalent) with an abstract idea17; mere instructions to implement an
abstract idea on a computer18; or requiring no more than a generic computer
17 Alice, 573 U.S. at 221-23.
18 Alice, 573 U.S. at 221, e.g., simply implementing a mathematical
principle on a physical machine, namely a computer (citing Mayo, 566 U.S.
at 84-85).
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to perform generic computer functions that are well-understood, routine and
conventional activities previously known to the industry. 19
Evaluating representative claim 16 under step 2 of the Alice analysis,
we conclude it lacks an inventive concept that transforms the abstract idea of
patient monitoring and coaching into a patent-eligible application of that
abstract idea.
The patent eligibility inquiry may contain underlying issues of fact.
Mortg. Grader, 811 F.3d at 1325. In particular, "[t]he question of whether a
claim element or combination of elements is well-understood, routine and
conventional to a skilled artisan in the relevant field is a question of fact."
Berkheimer, 881 F.3d at 1368.
Appellants contend:
The rejection relies on a bare assertion that the functions are
generic and the ordered combination does not add significantly
more to the alleged abstract idea.
In BASCOM, the Federal Circuit deemed an analysis
similar to the Examiner's to be inadequate . ... The Court
explained that "[t]he inventive concept inquiry requires more
than recognizing that each claim element, by itself, was known
in the art, [because] an inventive concept can be found in the
non-conventional and non-generic arrangement of known,
conventional pieces."
App. Br. 14-15 ( citation omitted) ( emphasis added) ( alteration in original).
As evidence of the conventional nature of the recited "processors,"
"patient monitoring system," "diagnostic medical device attached to a
19 Alice, 573 U.S. at 225, e.g., using a computer to obtain data, adjust
account balances, and issue automated instructions.
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patient," "user interface," and "patient monitoring system" in system claim 1
and method claim 16, the Specification discloses:
The patient monitoring system comprises a health
professional user interface ... which a health professional []
can use to monitor the progress or status a patient .... The
patient monitoring system further comprises a patient user
interface ... which allows a patient to input information to the
patient monitoring system ... [ and] may also be adapted for
displaying information from the patient monitoring system.
Spec. 2, 1. 30-3, 1. 4. Further, "[a] diagnostic medical device ... is a
medical device which performs a diagnostic measurement on a patient."
Spec. 6, 11. 7-8. Moreover,
The computing device 200 comprises a processor 202, storage
204, and memory 206. The storage may be any storage which is
computer-readable. Examples are, but not limited to: hard disk
drives, flash drives and solid state based hard drives. The
memory 206 is memory which is directly accessible to the
processor 202 for use. The processor 202 may also be multiple
processors and the processing tasks may be performed by a
single computing device 200 or may be distributed across many
computing devices 200 with processors 202. In the computer 30
memory 206 is a program 208. The program 208 is stored in
memory 206 and is configured to be executed by the processor
202.
Spec. 12, 11. 23-31.
Thus, because the Specification describes the additional elements in
general terms, without describing the particulars, we conclude the claim
limitations may be broadly but reasonably construed as reciting conventional
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computer components and techniques, particularly in light of Appellants'
Specification, as quoted above. 20
Appellants further argue:
The claims are patent-eligible because, when viewed as a
whole, their character is not directed to excluded subject matter
and there is no evidence that the claims simply automate well-
known, routine, conventional activity . ... Specifically, when
viewed as a whole, the claims recite a particular technical
solution that provides a particular useful application to improve
another technology or technical field ( e.g., patient monitoring
systems) .... Furthermore, unlike other cases ( e.g., Alice) in
which the claims at issue were found to be patent-ineligible,
where the claimed computer-automated process and the prior
method were carried out in the same way, there is no evidence
to show that the claims in the instant application simply
automate a well-understood, routine, conventional activity.
App. Br. 15-17 ( emphasis added). We are not persuaded by Appellants'
arguments.
We are not persuaded by this argument because, in Bascom, the
claims were directed to the inventive concept of providing customizable
Internet-content filtering which, under Step 2 of the Alice analysis, was
found to transform the abstract idea of filtering content into a patent-eligible
invention. Although the underlying idea of filtering Internet content was
deemed to abstract, under step 2 of the Alice analysis, the claims carved out
a specific location for the filtering system, namely a remote Internet service
provider (ISP) server, and required the filtering system to give users the
2° Claim terms are to be given their broadest reasonable interpretation, as
understood by those of ordinary skill in the art and taking into account
whatever enlightenment may be had from the Specification. In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
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ability to customize filtering for their individual network accounts. Bascom
Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1349
(Fed. Cir. 2016).
In further response to Appellants' reliance upon Bascom, supra, there
is no evidence of record to substantiate the assertion that the claims recite
non-conventional and non-generic arrangement of known, conventional
elements, as in Bascom. Moreover, we find no analogy between Appellants'
claimed patient monitoring and coaching and the Internet content filtering
claims in Bascom.
Further, the Manual of Patent Examining Procedure, based upon our
precedential guidance, provides additional considerations with respect to
analysis of the well-understood, routine, and conventional nature of the
claimed computer-related components.
Another consideration when determining whether a claim
recites significantly more than a judicial exception is whether
the additional elements amount to more than a recitation of the
words "apply it" ( or an equivalent) or are more than mere
instructions to implement an abstract idea or other exception on
a computer. As explained by the Supreme Court, in order to
transform a judicial exception into a patent-eligible application,
the additional element or combination of elements must do
"'more than simply stat[ e] the uudicial exception] while adding
the words 'apply it"'. Alice Corp. v. CLS Bank, 573 U.S._,
134 S. Ct. 2347, 2357, 110 USPQ2d 1976, 1982-83 (2014)
( quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 72, 101 USPQ2d 1961, 1965). Thus, for example,
claims that amount to nothing more than an instruction to apply
the abstract idea using a generic computer do not render an
abstract idea eligible. Alice Corp., 134 S. Ct. at 2358, 110
USPQ2d at 1983. [See] also 134 S. Ct. at 2389, 110 USPQ2d at
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1984 (warning against a§ 101 analysis that turns on "the
draftsman's art") ....
In Alice Corp., the claim recited the concept of intermediated
settlement as performed by a generic computer. The Court
found that the recitation of the computer in the claim amounted
to mere instructions to apply the abstract idea on a generic
computer. 134 S. Ct. at 2359-60, 110 USPQ2d at 1984. The
Supreme Court also discussed this concept in an earlier case,
Gottschalk v. Benson, 409 U.S. 63, 70, 175 USPQ 673, 676
(1972), where the claim recited a process for converting binary-
coded decimal (BCD) numerals into pure binary numbers. The
Court found that the claimed process had no substantial
practical application except in connection with a computer.
Benson, 409 U.S. at 71-72, 175 USPQ at 676. The claim simply
stated a judicial exception ([e.g.,] law of nature or abstract idea)
while effectively adding words that "apply it" in a computer. Id.
MPEP § 2106.05(±) ("Mere Instructions To Apply An Exception").
With respect to the Step 2B analysis, we conclude, similar to Alice, the
recitation of a method for patient monitoring and coaching that includes
"one or more processors of a patient monitoring system comprising a
diagnostic medical device attached to a patient and a user interface"
( claim 16, and similarly for claim 1 ), as argued by Appellants, is simply not
enough to transform the patent-ineligible abstract idea here into a patent-
eligible invention under Step 2B. See Alice, 573 U.S. at 221 ("[C]laims,
which merely require generic computer implementation, fail to transform
[an] abstract idea into a patent-eligible invention.").
We conclude the claims fail the Step 2B analysis because independent
claim 16, and similarly for independent claim 1, in essence, merely recites
various computer-based elements along with no more than mere instructions
to implement the identified abstract idea using the computer-based elements.
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Therefore, because the claims fail under both the Step 2A and Step 2B
analyses, we sustain the Examiner's§ 101 rejection of independent claims 1
and 16, and grouped claims 2-8, 10, 15, 17, and 18, not argued separately,
and which fall therewith. See Claim Grouping, supra.
CONCLUSION
Under our Revised Guidance, governed by relevant case law, we
conclude claims 1-8, 10, and 15-18 in the patent-eligible subject matter
rejection are directed to patent-ineligible subject matter, and we sustain the
rejection.
DECISION
We affirm the Examiner's decision rejecting claims 1-8, 10,
and 15-18.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a)(l )(iv). S'ee 37
C.F.R. § 41.50(±).
AFFIRMED
26