Ex Parte Kanada

Patent Trial and Appeal Board

Aug 31, 2016

13650905 (P.T.A.B. Aug. 31, 2016)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/650,905 10/12/2012 Shoji KANADA PA21911US 9886
21254 7590 08/31/2016
MCGINN INTELLECTUAL PROPERTY LAW GROUP, PLLC
8321 OLD COURTHOUSE ROAD
SUITE 200
VIENNA, VA 22182-3817
EXAMINER
NAJARIAN, LENA
ART UNIT PAPER NUMBER
3626
MAIL DATE DELIVERY MODE
08/31/2016 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 SHOJI KANADA
____________________

Appeal 2016-0050431
Application 13/650,9052
Technology Center 3600
____________________

Before NINA L. MEDLOCK, BRADLEY B. BAYAT, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

BAYAT, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1 and 3–27. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 Our decision references Appellant’s Appeal Brief (“App. Br.,” filed
Sept. 18, 2015) and Reply Brief (“Reply Br.,” filed Apr. 11, 2016), the
Examiner’s Answer (“Ans.,” mailed Mar. 8, 2016), and the Final Office
Action (“Final Act.,” mailed Mar. 17, 2015).
2 According to Appellant, the real party in interest is Fujifilm Corporation.
App. Br. 1.
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Application 13/650,905

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CLAIMED INVENTION
Appellant’s “invention relates to a clinical information processing
apparatus and method for calculating a degree of similarity between a case
of a target patient and a case of a comparison target patient” (Spec. 1:5–8).
Claims 1, 13, 21, and 22 are independent. Claim 21, reproduced below with
bracketed matter, is illustrative of the subject matter on appeal:
21. A clinical information processing method, the method
comprising:
[1] accessing a memory device which stores a clinical
information database, and obtaining from the clinical
information database:
[a] registration case information for calculating a
likelihood ratio including a multiplicity of registration cases
about a plurality of comparison target patients, and to each of the
multiplicity of registration cases a plurality of clinical-
information items each of which is classifiable into a plurality of
groups being correlated; and
[b] registration case information for calculating a degree
of similarity including a multiplicity of registration cases about
a plurality of comparison target patients, and to each of the
multiplicity of registration cases a plurality of clinical-
information items each of which is classifiable into a plurality of
groups being correlated;
[2] in a processing apparatus comprising a target case
obtainment unit and a display control unit, obtaining, as a target
classification of a target clinical item, a classification of each of
a plurality of clinical-information items about a target patient;
[3] calculating, based on the registration case information
for calculating a likelihood ratio, likelihood ratio information for
each combination of a classification of a key item of the plurality
of clinical-information items and each classification of at least
one clinical-information item other than the key item to each
classification of the key item included in the registration cases,
and the likelihood ratio information being obtained by
calculating a likelihood ratio between a likelihood of belonging
to one classification of the key item and a likelihood of belonging
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Application 13/650,905

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to any classification of the key item other than the one
classification of the key item when a case belongs to each
classification of the at least one clinical-information item other
than the key item;
[4] calculating, for each of the combinations, values in
such a manner that the weight of the value become greater as the
likelihood ratio corresponding to the combination is greater, and
determining weighting coefficients by weighting the calculated
value in such a manner that a weight of the value corresponding
to the target classification is greater than or equal to the weight
of the value corresponding to the classification other than the
target classification for each of the clinical-information items;
[5] specifying, based on the determined weighting
coefficient information, the weighting coefficient corresponding
to each classification of the key item and each classification of at
least one clinical-information item other than the key item for
each of the registration cases included in the registration case
information for calculating a degree of similarity, and [6]
calculating a degree of similarity by using the specified
weighting coefficient;
[7] extracting, from among the registration case
information for calculating a degree of similarity, the registration
case, the calculated degree of similarity of which is higher than
a predetermined value, as a similar case, which is similar to the
target case,
[8] retrieving the similar case information related to the
extracted similar case;
[9] outputting the retrieved similar case information to the
display control unit; and
[10] displaying the similar case information on a display
device which is controlled by the display control unit of the
processing apparatus.

App. Br. 28–29, Claims Appendix.

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Application 13/650,905

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REJECTIONS
Claims 1 and 3–27 are rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
Claims 1 and 3–27 are rejected under 35 U.S.C. § 112, second
paragraph.
ANALYSIS
Non-Statutory Subject Matter
The Supreme Court has set forth “a framework for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those concepts.” Alice,
134 S. Ct. 2347, 2355 (Fed. Cir. 2014) (citing Mayo, 132 S. Ct. 1289, 1294
(Fed. Cir. 2012)). According to the Supreme Court’s framework, it must
first be determined whether the claims at issue are directed to one of those
concepts (i.e., laws of nature, natural phenomena, and abstract ideas) (id.).
If so, a second determination must be made to “consider the elements of
each claim both individually and ‘as an ordered combination’ to determine
whether the additional elements ‘transform the nature of the claim’ into a
patent-eligible application (id.).
To that end, with regard to the first part of the Alice inquiry, the
Examiner finds that “[c]laims 1 and 3–27 are directed to the abstract idea of
calculating a degree of similarity, which has been determined to be a
mathematical relationship,” and therefore ineligible subject matter under
35 U.S.C. § 101 (Final Act. 2). With regard to the second part of the Alice
inquiry, the Examiner determines that “[t]he claims do not include additional
elements that are sufficient to amount to significantly more than the judicial
exception because the computer as recited is a generic computer component
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Application 13/650,905

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that performs functions (i.e., stores information, obtains information,
performs calculations, extracts/retrieves information, and displays
information),” which “are well-understood, routine, and conventional
activities previously known to the industry” (id. at 2–3). The Examiner
concludes that “[t]he claims do not amount to significantly more than the
underlying abstract idea of calculating a degree of similarity” (id. at 3). In
the Answer, the Examiner takes the additional position that “[c]laims 1 and
3–27 are also directed to the abstract idea of comparing new and stored
information and using rules to identify options” (Ans. 5). The Examiner
then concludes that “[t]he claims do not amount to significantly more than
the underlying abstract ideas of mathematical relationships and comparing
new and stored information and using rules to identify options” (id. at 6).
The Examiner has applied this analysis to all the claims in the rejection.
We have considered Appellant’s arguments (App. Br. 5–17; Reply
Br. 2–18) against the findings set forth by the Examiner in the final rejection
(Final Act. 2–3), including the reasons and rebuttals set forth in the
Examiner’s Answer in response to Appellant’s arguments (Ans. 5–7), and on
the record before us, we find that the Examiner has not shown that the
claims are directed to patent-ineligible subject matter.
The difficulty with the Examiner’s finding under the first part of the
Alice framework is the lack of any analysis or reasoning in arriving at the
judicial exception. The Examiner simply asserts that the claims are not
eligible because they are directed to calculating a degree of similarity, a
mathematical relationship, which is an abstract idea. In other words, the
Examiner has not shown that the method simply describes the concept of
calculating a degree of similarity through mathematical relationships.
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Although the absence of expressly recited mathematical algorithms or
equations carries no significance in determining whether a claim falls within
the proffered abstract idea, we find that the process of claim 21 as a whole
does not seek to “tie up” a mathematical relationship for calculating a degree
of similarity. We also disagree with the Examiner’s additional position of
the abstract idea because the broadest reasonable interpretation of the claim
is not directed to comparing new and stored information and using rules to
identify options (see Ans. 5). Therefore, we find that the Examiner’s
determination of the abstract idea under the first step of the Alice inquiry is
unfounded. As such, we need not proceed in analyzing the Examiner’s
determination as to the second step of the Alice inquiry. Accordingly, we do
not sustain the rejection under 35 U.S.C. § 101.
Indefiniteness
Appellant has not contested the rejection of claims 1 and 3–27 under
35 U.S.C. § 112, second paragraph. Thus, we summarily sustain the
rejection of these claims.
DECISION
The rejection under 35 U.S.C. § 101 is reversed.
The rejection under 35 U.S.C. § 112, second paragraph, is sustained.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED