Ex Parte Elsholz

Patent Trials and Appeals Board

Jun 25, 2019

11273790 - (D) (P.T.A.B. Jun. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
11/273,790 11/15/2005 John F. Elsholz
24737 7590 06/27/2019
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.
2005P03097US01 5649
EXAMINER
WILLIAMS, TERESA S
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
06/27/2019 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 JOHN F. ELSHOLZ
Appeal 2018-004241
Application 11/273,7901
Technology Center 3600
Before MAHSHID D. SAADAT, JOHN A. EVANS, and
MATTHEW J. McNEILL, Administrative Patent Judges.
McNEILL, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1, 3-10, and 28-38, which are all the claims pending in
this application. Claims 2 and 11-27 are canceled. App. Br. 10, 12. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellant, the real party in interest is Koninklijke Philips
N.V. App. Br. 2.
Appeal 2018-004241
Application 11/273,790
STATEMENT OF THE CASE
Introduction
Appellant's application relates to an automated system for capturing
and archiving patient and clinical information to verify the medical necessity
of a given medical procedure. Spec. ,-J 2. Claim 1 illustrates the appealed
subject matter and reads as follows:
1. A non-transitory computer-readable medium embedded
with an application software routine of a medical information
collection and processing system, which, in response to a
processor of the system executing the application software
routine, causes the processor to perform steps of:
obtaining criteria that must be satisfied to verify a need for
performing a medical procedure, wherein the criteria identifies
medical data for data entries of a list of data entries of a
predetermined work flow of a guideline for the medical
procedure, and wherein the medical data includes a patient
history and a physiological parameter of the patient, wherein the
physiological parameter is a result of a medical test generated by
medical test equipment;
proceeding, in response to initiating said routine, to search
for and acquire the medical data, with the hardware processor,
from information that has been collected with respect to a patient;
providing visual indications, on a graphical user interface
of the system indicating an extent to which the information
collected on the patient includes the medical data;
in response to one or more visual indications on the
graphical user interface indicating that one or more parameters
of the medical data has not been acquired, communicating with
electronic information sources with the one or more parameters,
and acquiring the one or more parameters; and
storing, in an auditable archival file, the acquired medical
data.
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The Examiner's Rejections
Claims 1, 3-10, and 28-38 stand rejected under 35 U.S.C. § 101 as
being directed to patent-ineligible subject matter. Final Act. 2-10.
Claims 1, 3-10, and 28-37 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Heck (US 2005/0285745 Al; Dec. 29, 2005), Blue
Cross Blue Shield of North Carolina, Medicare CID Medical Coverage
Policy ("Blue Cross"), and Gjorsvik (WO 03/043494 Al; May 30, 2003).
Final Act. 6-20.
Claim 38 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Heck, Blue Cross, Gjorsvik, and Dew (US 2003/0033169
Al; Feb. 13, 2003). Final Act. 20-21.
ANALYSIS
Patent-Ineligible Subject Matter
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. Pty. Ltd. 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. Alice, 573 U. S. 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
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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, 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 water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 184 n.7 (quoting Corning v. Burden, 56 U.S.
(15 How.) 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 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
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
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mathematical formula to a known structure or process may well be deserving
of patent protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 ( 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. ( 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.
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 ("Revised Guidance").
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 activities such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see Manual of Patent Examining Procedure
"MPEP" § 2106.05(a)-(c), (e)-(h)).
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:
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(3) adds a specific limitation beyond the judicial exception that is not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.0S(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.
See Revised Guidance.
Revised Guidance Step 1
Step 1 of the Revised Guidance asks whether the claimed subject
matter falls within the four statutory categories of patentable subject matter
identified by 3 5 U.S. C. § 101 : process, machine, manufacture, or
composition of matter. See Revised Guidance. Claim 1 recites "A non-
transitory computer-readable medium embedded with an application
software routine of a medical information collection and processing system,
which, in response to a processor of the system executing the application
software routine, causes the processor to perform steps of." Appellant does
not argue the Examiner erred in concluding claim 1 falls within the four
statutory categories of patentable subject matter. We agree with the
Examiner's conclusion because claim 1 falls within the process category.
Revised Guidance Step 2A, Prong 1
Under Step 2A, Prong 1 of the Revised Guidance, we determine
whether the claims recite 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). See Revised Guidance.
The Examiner concludes claim 1 is directed to "obtaining searched
medical history and physiological parameter test information for a patient
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according to workflow guidelines to determine whether a medical procedure
needs to be performed using visual indicators to avoid an audit." Final Act.
3. The Examiner concludes this is an "idea of itself' that is similar to
abstract ideas identified by courts in that the claims collect, analyze, and
display information. See id. at 4. The Examiner also concludes that "by
making the determination that medical data has not already been acquired is
merely a form of analysis that any healthcare provider or administrator,
familiar with the criterion of medical practices, Medicare & Medicaid
services, would be able to do." Ans. 21. Thus, the Examiner concludes
claim 1 recites an evaluation or judgment, which falls within the mental
process category of abstract ideas identified in the Revised Guidance.
Appellant does not specifically argue that claim 1 is not directed to an
abstract idea. See App. Br. 4-6; Reply Br. 2-3. Claim 1 recites the
following limitations: (1) "obtaining criteria that must be satisfied to verify
a need for performing a medical procedure, wherein the criteria identifies
medical data for data entries of a list of data entries of a predetermined work
flow of a guideline for the medical procedure, and wherein the medical data
includes a patient history and a physiological parameter of the patient,
wherein the physiological parameter is a result of a medical test generated
by medical test equipment;" (2) "proceeding, in response to initiating said
routine, to search for and acquire the medical data ... from information that
has been collected with respect to a patient;" (3) "indicating an extent to
which the information collected on the patient includes the medical data;"
( 4) "in response to ... indications ... that one or more parameters of the
medical data has not been acquired, . . . acquiring the one or more
parameters;" and (5) "storing ... the acquired medical data."
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We agree with the Examiner that these limitations, under their
broadest reasonable interpretation, recite obtaining medical history and test
information. For example, the "obtaining" and "proceeding" steps recited in
limitations (1) and (2) characterize obtaining multiple forms of medical data
regarding a patient. The "providing" step recited in limitation (3)
characterizes displaying an indication of the completeness of the collected
medical data. The "in response" step recited in limitation ( 4) characterizes
searching for additional data if the collected data is incomplete. The
"storing" step recited in limitation ( 5) characterizes storing the acquired
medical data. Under the broadest reasonable interpretation, claim 1 recites
obtaining medical history and test information, determining whether
additional data needs to be acquired, and acquiring that additional data.
Accordingly, we conclude claim 1 recites an observation, evaluation, and
judgment, which fall within the mental processes category of abstract ideas
identified in the Revised Guidance.
Revised Guidance Step 2A, Prong 2
Under Step 2A, Prong 2 of the Revised Guidance, we next determine
whether the claims recite additional elements that integrate the judicial
exception into a practical application (see MPEP § 2106.05(a)-(c), (e)-(h)).
Appellant argues claim 1 improves an existing technological process,
namely comparing acquired medical data to criteria that is needed to verify
the medical necessity of a medical procedure. App. Br. 4. Appellant argues
claim 1 goes beyond mere data collection because it uses a computer to
analyze the data and display the results. See id. at 5. Appellant argues the
claims are similar to those in McRo because they employ a computer to carry
out a mathematical algorithm to improve an existing technology. See id. at 5
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(citing McRo, Inc., DB. Planet Blue v. Bandai Namco Games America Inc.,
835 F.3d 1299 (Fed. Cir. 2016)).
The "additional elements" recited in claim 1 include "a non-transitory
computer-readable medium embedded with an application software routine;"
a "hardware processor;" and "a graphical user interface." None of these
additional elements constitute "additional elements that integrate the
exception into a practical application." See MPEP § 2106.0S(a)-(c), (e)-(h).
To integrate the exception into a practical application, the additional claim
elements must, for example, improve the functioning of a computer or any
other technology or technical field (see MPEP § 2106.0S(a)), apply the
judicial exception with a particular machine (see MPEP § 2106.05(b )), affect
a transformation or reduction of a particular article to a different state or
thing (see MPEP § 2106.0S(c)), or apply or use the judicial exception in
some other meaningful way beyond generally linking the use of the judicial
exception to a particular technological environment (see MPEP
§ 2106.0S(e)). See Revised Guidance.
The nature of claim 1 as a whole is not to define a specific
technological improvement, which may constitute integrating the claims into
a practical application. Instead, claim 1 merely recites the steps necessary to
perform the abstract idea itself. Our reviewing court has "made clear that
mere automation of manual processes using generic computers does not
constitute a patentable improvement in computer technology." Credit
Acceptance Corp. v. Westlake Svcs., 2016-2001, at 19 (Fed. Cir. June 9,
2017). Like the claims in Credit Acceptance, the focus of claim 1 is on the
business practice, "and the recited generic computer elements 'are invoked
merely as a tool."' Id. (citing Enfish, LLC v. Microsoft Corp., 822 F.3d
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1327 (Fed. Cir. 2016)); see also Versata Dev. Grp., Inc. v. SAP Am., Inc.,
793 F.3d 1306, 1334 (Fed. Cir. 2015) (collecting cases).
Specifically, the claimed "computer-readable medium" and "hardware
processor" are "generic processes and machinery," used to achieve the
claimed results and are not focused on "a specific means or method that
improves the relevant technology." McRO, Inc. v. Bandai Namco Games
America Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016). Appellant's
Specification confirms the generic, conventional nature of the claimed
processing device. See Spec. ,i 22. In particular, the Specification discloses
the claimed software may be executed by a "conventional computer." See
id.
Appellant's argument that claim 1 improves a technological process is
unpersuasive. See App. Br. 4-6. Contrary to Appellant's argument, claim 1
focuses on improving the abstract idea itself-collection of medical data.
Such data collection could be accomplished without the recited additional
elements, which are merely included as a tool to implement the abstract idea.
Thus, Appellant has not persuaded us of Examiner error with respect
to Step 2A, Prong 2 of the Revised Guidance. Therefore, we conclude the
judicial exception is not integrated into a practical application under the
Revised Guidance.
Revised Guidance Step 2B
Under Step 2B of the Revised Guidance, we next determine whether
the claims recite an "inventive concept" that "must be significantly more
than the abstract idea itself, and cannot simply be an instruction to
implement or apply the abstract idea on a computer." BASCOM Global
Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1349 (Fed. Cir.
2016). There must be more than "computer functions [that] are 'well-
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understood, routine, conventional activit[ies]' previously known to the
industry." Alice, 573 U.S. at 225 (second alteration in original) ( quoting
Mayo, 566 U.S. at 73).
Appellant argues claim 1 recites significantly more than merely
describing and applying the abstract idea. App. Br. 4-6; Reply Br. 2-3. As
noted above with respect to Step 2A, Prong 2, Appellant argues claim 1
improves a technological process. According to Appellant, the additional
steps to search for information in the event that medical data is not acquired
improve the existing auditing process.
Appellant has not persuaded us of Examiner error. As explained
above, Appellant's claims focus on improving the auditing process by
acquiring additional information-an improvement to the abstract idea itself,
not an improvement to a technological process.
In DDR Holdings, the Federal Circuit found that claims drawn to
"generating a composite web page that combines certain visual elements of a
'host' website with content of a third-party merchant" provided a solution
"necessarily rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer networks." DDR Holdings,
LLC v. Hotels.com, LP, 773 F.3d 1245, 1248, 1257 (Fed. Cir. 2014). The
claims addressed a problem in a manner that was "not merely the routine or
conventional use of the Internet." Id. at 1259. In particular, rather than the
expected behavior of simply sending the website visitor to a third-party
website, the claimed invention behaved in a manner different than expected
by sending a website visitor to a hybrid web page presenting information
from a third-party with the look and feel of the host website. Id. at 1258-59.
In contrast, Appellant's invention solves a problem of obtaining
medical history and test information, determining whether additional data
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needs to be acquired, and acquiring that additional data. This is not a
problem particular to the Internet, and Appellant's solution does not override
the routine or conventional use of the Internet or any other technology.
Rather, Appellant's claims use a processor to perform routine, conventional
computer functions to obtain medical history and test information.
For these reasons, we agree with the Examiner that the claims do not
recite an "inventive concept" sufficient to transform the claims from an
abstract idea to a patent eligible application. We, therefore, sustain the
patent-ineligible subject matter rejection of claim 1. We also sustain the
rejection of dependent claims 3-10 and 28-38, for which Appellant provides
no separate argument. See App. Br. 4-6; Reply Br. 2-3.
Obviousness
Appellant argues the Examiner erred in rejecting claim 1 as obvious
because Heck does not teach or suggest "proceeding, in response to
initiating said routine, to search for and acquire the medical data, with the
hardware processor, from information that has been collected with respect to
a patient;" and when "one or more parameters of the medical data has not
been acquired, communicating with electronic information sources with the
one or more parameters, and acquiring the one or more parameters." See
App. Br. 7-8; Reply Br. 4-6. In particular, Appellant argues Heck teaches a
graphical user interface that includes indicators, which may show a status
other than compliance, prompting a user to check an appropriate status list to
determine actions that are needed before proceeding with treatment. Reply
Br. 4. Appellant argues the system allows the user quick access to relevant
information, but does not actively search and acquire medical data from
information that has been collected, as claimed. Id. at 5.
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Appellant has not persuaded us of Examiner error. The Examiner
finds, and we agree, Heck teaches a graphical user interface that includes
indicators displaying the status of a patient. Final Act. 6-7 ( citing Heck
,i,i 17, 31, 45-51 ). The Examiner finds Heck teaches automatically updating
the status when medical data changes. Ans. 23 (citing Heck ,i,i 45-51).
Appellant's argument that Heck teaches the user enters the
information prior to the status update change (see Reply Br. 5) is
unpersuasive. Although Heck teaches that a user may update information in
the status lists, Heck also teaches the system may receive information
needed for various status lists for other systems. See Heck ,i 17. Heck
teaches the user may interact with the various status lists and access
additional information that is not displayed on the indicators in the graphical
user interface. See Heck ,i 31. Thus, Heck at least suggests that when the
user interacts with the system to obtain more information, the system may
retrieve that information from other systems. See Heck ,i,i 17, 31, 45-51.
Appellant's argument that Heck does not teach or suggest that the
indicators themselves obtain the parameters associated with the indicator
(see App. Br. 8) is also unpersuasive. Claim 1 recites "in response to one or
more visual indications on the graphical user interface indicating that one or
more parameters of the medical data has not been acquired, communicating
with electronic information sources .... " In other words, claim 1 recites the
processor recited in the preamble performs the communicating in response
to the indication that data has not been acquired. Claim 1 does not recite, as
Appellant suggests, that the indicators themselves must perform the
communicating step. Accordingly, Appellant's argument is not
commensurate with the scope of the claim.
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For these reasons, Appellant has not persuaded us the Examiner erred
in rejecting claim 1 as unpatentable over Heck, Blue Cross, and Gjorsvik.
We, therefore, sustain the obviousness rejection of claim 1. We also sustain
the rejection of dependent claims 3-10 and 28-38, for which Appellant
provides no separate argument. See App. Br. 8-9; Reply Br. 6.
DECISION
We affirm the Examiner's decision rejecting claims 1, 3-10, and 2 8-
38 under 35 U.S.C. § 101.
We affirm the Examiner's decision rejecting claims 1, 3-10, and 2 8-
38 under 35 U.S.C. § 103.
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). See
37 C.F.R. § 41.50(±).
AFFIRMED
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