Ex Parte Dixon et al

Patent Trial and Appeal Board

Mar 4, 2019

13941161 (P.T.A.B. Mar. 4, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/941,161 07/12/2013 Steven A. Dixon
24256 7590 03/04/2019
DINSMORE & SHOHL LLP
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.
Nl-37096 1051
EXAMINER
255 East Fifth Street, Suite 1900 HARE,DAVIDR
CINCINNATI, OH 45202
ART UNIT PAPER NUMBER
3673
MAIL DATE DELIVERY MODE
03/04/2019 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
Ex parte STEVEN A. DIXON and DAVID RIBBLE 1
Appeal 2017-011402
Application 13/941, 161
Technology Center 3600
Before STEFAN STAICOVICI, JAMES P. CALVE, and
MICHELLE R. OSINSKI, Administrative Patent Judges.
OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-20. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART.
1 Liko Research & Development AB ("Appellant") is the Applicant as
provided in 37 C.F.R. § 1.46. See Application Data Sheet (filed Jan. 25,
2016). Appellant has identified Hill-Rom, Inc. as the assignee of the present
application, and thus, the real party in interest. Appeal Br. 1. The Patent
Assignment records of the USPTO, however, identify Hill-Rom Services,
Inc. as the correspondent and identify Liko Research & Development AB as
the assignee.
Appeal 2017-011402
Application 13/941,161
THE CLAIMED SUBJECT MATTER
Claims 1 and 16 are independent. Claims 1 and 16, reproduced
below, are illustrative of the claimed subject matter on appeal.
1. A monitoring system comprising:
a person support structure configured to support a person
thereon;
a person lifting system configured to lift a person to
change the person's position with respect to the person support
structure; and
a reporting system configured to indicate whether a lift
event is compliant as a function of a change in position of a
person on the person support structure, a requirement that the
person be moved using the person lifting system, a caregiver's
presence, and usage of the person lifting system.
16. A method of determining if a lift event is compliant,
comprising the steps of:
receiving information indicative of a person's movement
with respect to a person support structure;
receiving information indicative of whether the person is
required to be moved using a person lift system;
receiving information indicative of a caregiver's presence
when the person moved;
receiving information indicative of operational status of
the person lifting system when the person moved; and
determining if a lift event is compliant as a function of the
received information.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Hayes
NG
US 2013/0091631 Al
US 2014/0115778 Al
2
Apr.18,2013
May 1, 2014
Appeal 2017-011402
Application 13/941,161
THE REJECTIONS
I. Claims 16-20 stand rejected under 35 U.S.C. § 101 as being
directed to patent ineligible subject matter. Non-Final Act. 3--4.
II. Claims 1-20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over NG and Hayes. Id. at 6-13.
OPINION
Rejection I
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 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. v. CLS Bank Int 'l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
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 );
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mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes ( Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 192
( 1981) ); "tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores" (id. at 184 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 176; see also id. at 192 ("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
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-
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eligible application." Alice, 573 U.S. at 221 (quotation marks 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's January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
("Memorandum"). Under that 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); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a}-(c), (e}-(h)).
Only if a claim (1) recites a judicial exception and (2) does not recite
additional elements to 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 are 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.
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See Memorandum.
The Examiner determines that the subject matter of claim 16 is
directed to a 'judicial exception" in that "the claim recites a method with
steps that could be accomplished by human intelligence or mental processes
alone." Non-Final Act. 3. Steps that can be performed in the human mind,
or by a human using pen and paper, are mental processes that are not eligible
under§ 101. CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
13 72 (Fed. Cir. 2001) (holding that a method for verifying the validity of a
credit card transaction over the Internet to be patent ineligible subject matter
as an abstract idea capable of being performed in the human mind or by a
human using pen and paper). Our reviewing court, relying on Supreme
Court precedent, has "consistently 'refused to find processes patentable
when they merely claimed a mental process standing alone and untied to
another category of statutory subject matter[,] even when a practical
application was claimed."' Id. (quoting In re Comiskey, 554 F.3d 967, 980
(Fed. Cir. 2009)). Mental processes or abstract intellectual concepts are not
patentable. Parker, 437 U.S. at 589; Benson, 409 U.S. at 67---68.
Appellant argues that "claim 16 is directed to a computerized method
that is capable of determining whether a lift event of a person lifting system
is compliant" and "[a]s a consequence, claim 16 is not a mental step."
Appeal Br. 10. The Examiner responds that each of the recited steps of
claim 16 indeed could be performed without the use of a computer (i.e.,
(1) by medical personnel "watching a patient's movement on a person
support structure"; (2) having medical personnel receive a doctor's order;
(3) having medical personnel "take note of the caregiver's location during
movement of the patient/person"; (4) by medical personnel "observing the
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person lifting system being 'in use' when a person is being lifted or moved
therewith"; and (5) having medical personnel "decide whether a lift event is
compliant.") Ans. 11-12.
We agree with the Examiner that the steps of Appellant's method
claim 16 can be performed in the human mind. Thus, we agree with the
Examiner's determination that method claim 16 is directed to a judicial
exception of at least a mental process. Moreover, although we appreciate
Appellant's position that "claim 16 is directed to a computerized method"
(see Appeal Br. 10), nonetheless, we find nothing of record that attributes
any improvement in the functioning of a computer, or an improvement to
another technology or technical field such that that the claimed invention
integrates the abstract idea into a "practical application," as that phrase is
used in the Memorandum.
We have considered Appellant's argument that "claim 16 does not
attempt to monopolize an entire technical field, but is instead directed to a
pointed application/embodiment" and that "because claim 16 does not
impermissibly preempt the basic tools of scientific and technological work,
claim 1 [ 6] is not directed to an abstract idea" ( Appeal Br. 11 ), but find it
unpersuasive. Merely because claims do not preempt all forms of the
abstraction does not make them any less abstract. See OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1362-63 (Fed. Cir. 2015) ("[T]hat the
claims do not preempt all price optimization or may be limited to price
optimization in the e-commerce setting do not make them any less
abstract."). Moreover, characterizing preemption as a driving concern for
patent eligibility is not the same as characterizing preemption as the
dispositive test for patent eligibility. Although "preemption may signal
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patent ineligible subject matter, the absence of complete preemption does
not demonstrate patent eligibility." Ariosa Diagnostics, Inc. v. Sequenom,
Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
We next consider whether the claim "appl[ies], "rel[ies] on, or use[s]
the judicial exception in a manner that imposes a meaningful limit on the
judicial exception, such that the claim is more than a drafting effort designed
to monopolize the judicial exception." See Memorandum; see also Alice,
573 U.S. at 217-18 (quoting Mayo, 566 U.S. at 72-73, 78) (It must be
"determine[ d] whether the claims at issue are directed to one of those patent
ineligible concepts"-i.e., a law of nature, a natural phenomenon, or an
abstract idea/judicial exception-and if so, "the elements of each claim
[must be considered] both individually and 'as an ordered combination' to
determine whether the additional elements 'transform the nature of the
claim' into a patent-eligible application." This part of the analysis has been
described by the Supreme Court as "a search for an 'inventive concept'-
i.e., an element or combination of elements that is 'sufficient to ensure that
the patent in practice amounts to significantly more than a patent upon the
[ ineligible concept] itself."').
Concerning this step, the Examiner determines that "the claim does
not include additional elements and/or structure that are sufficient to amount
to significantly more than the judicial exception because the claim recites a
method with steps that could be accomplished by human intelligence or
mental processes alone." Non-Final Act. 3--4.
Appellant argues that "claim 16 adds 'significantly more,' because it
adds a specific limitation other than what is well-understood, routine, and
conventional in the field." Appeal Br. 11. More particularly, Appellant
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points to the recited steps of "receiving information indicative of-1:] a
person's movement with respect to a person support structure ... whether
the person is required to be moved using a person lift system ... a
caregiver's presence when the person is moved ... [and] operational status
of the person lifting system when the person moved .... " Id. Appellant
asserts that "each of these claim elements and the claims as a whole add
'significantly more' than a judicial exception and are unconventional steps
that confine the claim to a particular useful application." Id. This argument
is unpersuasive in that Appellant points only to the identified mental process
steps, whereas this step is a search for an element or combination of
elements that ensures that the claim is more than the ineligible mental
process.
To the extent Appellant is arguing that the claimed mental process
steps are not well understood, routine, or conventional activities known to
the industry, this is not persuasive. The novelty or non-obviousness of the
mental process steps does not automatically lead to the conclusion that the
claimed subject matter is patent-eligible. Although the second step in the
Mayo/Alice framework is termed a search for an "inventive concept," the
analysis is not an evaluation of novelty or non-obviousness, but rather, a
search for "an element or combination of elements that is 'sufficient to
ensure that the patent in practice amounts to significantly more than a patent
upon the [ineligible concept] itself."' Alice, 573 U.S. at 217-18.
"Groundbreaking, innovative, or even brilliant discovery does not by itself
satisfy the§ 101 inquiry." Ass 'nfor Molecular Pathology v. Myriad
Genetics, Inc., 569 U.S. 576, 591 (2013). A novel and non-obvious claim
directed to a purely abstract idea is, nonetheless, patent-ineligible. See
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Mayo, 566 U.S. at 90; see also Diehr, 450 U.S. at 188-89 ("The 'novelty' of
any element or steps in a process, or even of the process itself, is of no
relevance in determining whether the subject matter of a claim falls within
the§ 101 categories of possibly patentable subject matter."); Genetic Techs.
Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016) ("[U]nder the
Mayo/Alice framework, a claim directed to a newly discovered law of nature
(or natural phenomenon or abstract idea) cannot rely on the novelty of that
discovery for the inventive concept necessary for patent eligibility.");
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir.
2016) (citing Mayo, 566 U.S. at 90) (a finding that the claims are novel and
nonobvious in light of an absence of evidence does not conflict with the
Examiner's conclusion under 35 U.S.C. § 101 because "a claim for a new
abstract idea is still an abstract idea"). However useful the mental process
steps may be, their value or usefulness is not dispositive of patent eligibility.
Flook, 437 U.S. at 594--96 (determining claims to "a new and presumably
better method for calculating alarm limit values," which were of undisputed
usefulness, to be directed to patent-ineligible subject matter).
For the foregoing reasons, we find nothing in independent claim 16 to
be sufficiently transformative to render claim 16 patent eligible. We sustain
the Examiner's rejection of claim 16 under 35 U.S. C. § 101 as being
directed to patent-ineligible subject matter. Appellant relies on the same
arguments and reasoning we found unpersuasive in connection with
independent claim 16 as the basis for seeking reversal of the rejection of
claims 17-20. Reply Br. 9. Accordingly, we also sustain the rejection of
claims 17-20 under 35 U.S. C. § 101 as being directed to patent-ineligible
subject matter.
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Re} ection II
Claims 1-15
The Examiner interprets the "reporting system" of independent
claim 1 as a means-plus-function claim limitation because it uses "a generic
placeholder 'a reporting system' coupled with functional language
'configured to indicate' without reciting sufficient structure to achieve the
function." Non-Final Act. 4. The Examiner asserts that the broadest
reasonable interpretation of the claim limitation is "the corresponding
structure described in the specification that achieves the claimed function,
and equivalents thereof." Id. at 5. The Examiner identifies the structure in
the Specification for performing the claimed function as a "display or
graphical user interface" or "reporting screen." Id. (citing Spec. Figs. 11
(element 96), 26). The Examiner finds that "[a]n example equivalent of the
reporting system could be a display or a graphical user interface" and "[a]s
such, NG['s] Light Emitting Diodes (LEDs) are present on the sling bar [60]
in Figure 4 to indicate various statuses of the lift system." Id. at 14. More
particularly, the Examiner finds that NG teaches, inter alia:
a reporting system (see page 2, para [0027]: LEDs [160] are
present on sling bar [60] to indicate status of the lift system)
configured to indicate whether a lift event is compliant as a
function of a change in position of a person on the person support
structure (see Fig. 5, position change can be determined by
position sensor [136]), a requirement that the person be moved
using the person lifting system (see page 1, para [0016]: the
existence of a "person lifting system" for this purpose implies
there is or will be a requirement to move a person from "a source
to a destination location"), and usage of the person lifting system.
Id. at 6-7.
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In our view, the structure recited in the Specification for performing
the claimed function of indicating whether a lift event is compliant as a
function of (i) a change in position of a person on the person support
structure, (ii) a requirement that the person be moved using the person lifting
system, a caregiver's presence, and (iii) usage of the person lifting system, is
more than a display or reporting screen. The Specification describes that
control system 54 of lift assembly 40 includes controller 78 that in tum
includes processor 90 and memory 94. Spec. 9:3--4, 10:1, 13:22-23.
Processor 90 is configured to execute instructions in memory 94. Id. at
14:3--4. These instructions may include procedure 300 to determine when a
lift event has occurred (id. at 14:8-9 (citing Fig. 9)) and procedure 400 to
determine "when a lift should have been used, but was not used to move a
patient" (id. at 16:9-10) (citing Fig. 10)). In the last step of procedure 400
for determining when a lift should have been used, but was not used, the
Specification states that "processor 90" either "indicates that the lift event
complied with the care facility's lift protocol" or "that the lift event did not
comply with the care facility's protocol." Id. at 17:9-12. Procedure 400 can
be executed on person support system 14, lift system 12, or information
management system 18. Id. at 16: 10-12. Information management system
18 is configured to display information and run reports on various types of
information, including reports with information regarding "the percentage of
time the assigned protocols and/or hospital care protocols are complied with
(i.e., the number of times a lift is used when a protocol proscribes a lift to be
used). Id. at 21: 14--16, 24: 16-17. Thus, the structure disclosed for carrying
out the claimed function of indicating whether a lift event is a compliant lift
event includes a processor configured to execute instructions in accordance
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with the flow chart (i.e., algorithm) of Figure 10. See WMS Gaming, Inc. v.
Int'! Game Tech., 184 F.3d 1339, 1349 (Fed. Cir. 1999) ("In a means-plus-
function claim in which the disclosed structure is a computer, or
microprocessor, programmed to carry out an algorithm, the disclosed
structure is not the general purpose computer, but rather the special purpose
computer programmed to perform the disclosed algorithm."). The Examiner
did not identify the processor and its algorithm as part of the corresponding
structure disclosed in the specification for performing the recited function.
Consequently, the Examiner did not identify or analyze a structure or
equivalent in the prior art of NG to the processor and its algorithm.
Because the Examiner did not make the requisite findings, 2 the
Examiner has not shown by a preponderance of the evidence that the prior
art discloses a reporting system configured to indicate whether a lift event is
compliant. We do not sustain the Examiner's rejection of claim 1 or of
claims 2-15 depending therefrom.
Claims 16-20
With respect to independent claim 16, the Examiner finds that
NG teaches:
2 The Examiner's rejection is based on NG including equivalent structure to
that described in the specification for achieving the claimed function of
indicating whether a lift event is compliant as a function of a change in
position of a person, a requirement that the person be moving using a person
lifting system, and usage of the person lifting system. Non-Final Act. 14.
The Examiner's rejection does not address the obviousness of using a
processor programmed with an algorithm to determine the compliancy of a
lift event based on whether there is a change in position of the person on the
person support structure, whether there is a requirement that a person be
moved using a person lifting system, and whether there is usage of the
person lifting system.
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a. receiving information indicative of a person's movement
with respect to a person support structure (see NG, Fig. 5,
position change can be determined by position sensor [136] and
displayed by LEDs [160];
b. receiving information indicative of whether the person is
required to be moved using a person lift system ( see page 1, para
[ 0016]: the existence of a "person lifting system" for this purpose
implies there is or will be a requirement to move a person from
"a source to a destination location");
c. receiving information indicative of operational status of
the person lifting system when the person moved (see page 2,
para [0027]: LEDs [ 160] are present on the sling bar [ 60] to
indicate[] status of the lift system); and
d. determining if a lift event is compliant as a function of the
received information (see page 2, para [0027] and Fig. 4, 7, 9).
Non-Final Act. 11.
The Examiner acknowledges that NG does not teach "receiving
information indicative of a caregiver's presence when the person moved,"
but finds that Hayes teaches such a step. Id. at 12 (citing Hayes, Fig. 1,
,r 25). The Examiner concludes that it would have been obvious to modify
NG to "includ[ e] a compatible RFID reader/tag system, such as the one
discussed by Hayes, on the device of NG (which already contains a[n] RFID
reader on control unit [40]) to improve safety of the device ofNG and
prevent unwanted movement of the patient lift without a caregiver's
presence." Id.
As described above, claim 16 is not limited to a computerized method
and encompasses a medical caregiver simply receiving certain information
( e.g., visually or orally) and making a mental determination of compliancy.
As explained by the Examiner, the claim never defines how the various
items of received information specifically affect a determination of
compliancy or non-compliancy, merely requiring that the determination of
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compliancy relate to the claimed information in some unspecified way. Ans.
3--4. With this in mind, the Examiner adequately explains how NG, as
modified with the teachings of Hayes, results in a medical caregiver
receiving the claimed information and determining the compliancy of a lift
as a function of the received information (Non-Final Act. 11-12; Ans. 3-
10), and Appellant has not persuaded us of error in the Examiner's findings
and conclusions (Appeal Br. 3-9; Reply Br. 2-8).
Accordingly, Appellant does not apprise us of error in the Examiner's
conclusion that the combination of NG and Hayes renders obvious the
subject matter of independent claim 16. We sustain the rejection of claim
16, and claims 17-20 depending therefrom, under 35 U.S.C. § 103(a) as
unpatentable over NG and Hayes.
DECISION
The Examiner's decision to reject claims 16-20 under 35 U.S.C.
§ 101 as being directed to patent ineligible subject matter is affirmed.
The Examiner's decision to reject claims 1-15 under 35 U.S.C.
§ 103(a) as unpatentable over NG and Hayes is reversed.
The Examiner's decision to reject claims 16-20 under 35 U.S.C.
§ 103(a) as unpatentable over NG and Hayes is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a). See 3 7 C.F .R.
§ 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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