Ex Parte Mason et al

Patent Trial and Appeal Board

Jan 31, 2019

12283770 (P.T.A.B. Jan. 31, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/283,770 09/16/2008
69814 7590 02/04/2019
BROOKS, CAMERON & HUEBSCH , PLLC
1201 Marquette Avenue South
Suite 400
MINNEAPOLIS, MN 55403
FIRST NAMED INVENTOR
David Mason
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.
1126.ALG.US.P 8421
EXAMINER
COLEMAN, CHARLES P.
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
02/04/2019 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):
Align.Docketing@bipl.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID MASON and WILLIAM G. BECKER
Appeal2017-010152
Application 12/283,770
Technology Center 3600
Before MICHAEL J. STRAUSS, J. JOHN LEE, and
JOSEPH P. LENTIVECH, Administrative Patent Judges.
LENTIVECH, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants 1 appeal from the
Examiner's decision to finally reject claims 1-28. Claims 29 and 30 have
been canceled. See App. Br. 20 (Claims App.). We have jurisdiction over
the pending claims under 35 U.S.C. § 6(b ).
We affirm.
1 According to Appellants, the real party in interest is Align Technology,
Inc. App. Br. 3.
Appeal2017-010152
Application 12/283,770
STATEMENT OF THE CASE
Appellants 'Invention
Appellants' invention generally relates to "dental condition evaluation
and treatment systems, apparatuses, and methods." Spec. 1: 5-7. Claim 1,
which is illustrative, reads as follows:
1. A computer-implemented method for evaluating a dental
condition, comprising:
creating a digital model of a user's teeth, usmg a
processor, based upon a scan of the user's teeth;
evaluating the digital model of the user's teeth by
comparing the digital model of the user's teeth with a database
containing digital models of prior cases;
creating a treatment plan for the dental condition of the
user's teeth using one or more treatment best match criteria;
receiving one or more ranked personal selection best
match criteria associated with treatment professionals from the
user; and
after the treatment plan is created and the one or more
ranked personal selection best match criteria is received,
providing the user a ranked list of treatment professionals for
initiation of the treatment plan, wherein the ranked list is based
on the one or more ranked personal selection best match criteria
associated with treatment professionals and the one or more
treatment best match criteria.
Rejections
Claims 1-28 stand rejected under 35 U.S.C. § 101 because the
claimed subject matter is judicially-excepted from patent eligibility under
§ 101. Final Act. 2-3.
Claims 1-28 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over the combination of Sachdeva (US 2004/0002873 Al;
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published Jan. 1, 2004), Takatori et al. (US 2002/0035572 Al; published
Mar. 21, 2002) ("Takatori"), Taira (US 2003/0144886 Al; published July
31, 2003), and Hicks et al. (US 2007/0185732 Al; published Aug. 9, 2007)
("Hicks"). Final Act. 4--12.
Issues on Appeal
Did the Examiner err in finding that claims 1-28 are directed to
subject matter that is judicially-excepted from patent eligibility under § 101?
Did the Examiner err in finding that the combination of Sachdeva,
Takatori, Taira, and Hicks teaches or suggests "receiving one or more
ranked personal selection best match criteria associated with treatment
professionals from the user," as recited in claim 1?
ANALYSIS
Rejection under 35 USC§ 101
Regarding the Examiner's rejection of claims 1-28 under 35 U.S.C.
§ 101, Appellants do not argue the claims separately but, instead, rely on the
same arguments for all the claims. App. Br. 7-9. We select claim 1 as
representative. Accordingly, claims 2-28 stand or fall with claim 1.
37 C.F.R. § 4I.37(c)(l)(iv).
PRINCIPLES OF LAW
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
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ideas" are not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 573
U.S. 208,216 (2014) (internal quotation marks and citation omitted).
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);
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, 191
(1981) ); "tanning, dyeing, making water-proof 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
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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. ( 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-
eligible application." Alice, 573 U.S. at 221 (internal 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. (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. 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:
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(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human interactions 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 p ATENT EXAMINING
PROCEDURE (MPEP) § 2106.05(a}-(c), (e}-(h) (9th Ed., Rev.
08.2017, Jan. 2018)).
See Memorandum, 84 Fed. Reg. at 52, 54--55. 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
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.
See Memorandum, 84 Fed. Reg. at 56.
DOES THE CLAIM RECITE A JUDICIAL EXCEPTION?
Claim 1 recites "evaluating the digital model of the user's teeth by
comparing the digital model of the user's teeth with a database containing
digital models of prior cases." These limitations, as drafted, are processes
that, under its broadest reasonable interpretation, cover performance of the
limitations in the mind. For example, a dentist could evaluate a digital
model of a user's teeth by visually comparing the digital model of the user's
teeth to a digital model of another user's teeth. See Spec. 4 ("The evaluation
method can, for example, include a treatment professional observing the
digital model for dental conditions of the user that can be corrected."). As
such, this limitation is a mental process.
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Claim 1 also recites "creating a treatment plan for the dental condition
of the user's teeth using one or more treatment best match criteria." This
limitation, as drafted, is also a process that, under its broadest reasonable
interpretation, covers performance of the limitation in the mind. For
example, based on the evaluation, the dentist creates a treatment plan by
determining the corrective action that is necessary to bring about a desired
result. See Spec. 5 ("Treatment plans that are created by the treatment
professional and/or through utilization of an automated process can outline,
for example, the steps and/or methods that will be used throughout the
treatment process to achieve a desired end result."). The dentist can base
this determination on one or more "treatment best match criteria," such as
"treatment plan cost, treatment plan length, treatment plan complexity,
and/or treatment plan comfort." Spec. 5. Thus, this limitation is also a
mental process.
Claim 1 also recites "receiving one or more ranked personal selection
best match criteria associated with treatment professionals from the user."
This limitation, as drafted, is also a process that, under its broadest
reasonable interpretation, covers performance of the limitation in the mind.
For example, the user may rank their personal importance of personal best
match criteria such as, for example, the treatment professional' s proximity to
the user's home, work, and/or hospital; the treatment professional's hours of
operation on certain days and/or times of the day; the financial options
provided by the treatment professional; the languages communicated by the
treatment professional; the education and/or credentials of the treatment
professional; the general and/or specific surgical experience of the treatment
professional; the ability of the treatment professional to treat patients with
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mixed dentition; and/or the treatment professional's practice focused on pre-
teens, teens, and/or adults, and provide this information to the dentist after
the evaluation. Spec. 6. Thus, this limitation is also a mental process.
Claim 1 also recites:
after the treatment plan is created and the one or more
ranked personal selection best match criteria is received,
providing the user a ranked list of treatment professionals for
initiation of the treatment plan, wherein the ranked list is based
on the one or more ranked personal selection best match criteria
associated with treatment professionals and the one or more
treatment best match criteria.
This limitation, as drafted, is also a process that, under its broadest
reasonable interpretation, covers performance of the limitation in the mind.
For example, the dentist can give the user a list of treatment professionals
that not only meet the treatment plan criteria, but also meet one of more of
the user's personal selection best match criteria. Spec. 5. Thus, this
limitation is also a mental process.
DOES THE CLAIM RECITE ADDITIONAL ELEMENTS THAT INTEGRATE THE
JUDICIAL EXCEPTION INTO A PRACTICAL APPLICATION?
The claim recites the additional element of "creating a digital model
of a user's teeth, using a processor, based upon a scan of the user's teeth."
This limitation is recited at a high level of generality and amounts to mere
data gathering and manipulation (see Spec. 15 ("The digital model can be
created by a computing device having executable instructions to manipulate
the data from the scan into a digital representation of the user's teeth.")),
which is a form of insignificant extra-solution activity. See Mayo, 566 U.S.
at 80. This limitation does not impose any meaningful limits on practicing
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the recited abstract ideas and, therefore, does not integrate the abstract ideas
(i.e., mental processes) into a practical application. For example, the claim
does not 1) improve the functioning of a computer or other technology, (2) is
not applied with any particular machine (except for a generic computer), (3)
does not effect a transformation of a particular article to a different state, and
( 4) is not applied in any meaningful way beyond generally linking the use of
the judicial exception to a particular technological environment, such that
the claim as a whole is more than a drafting effort designed to monopolize
the exception. See MPEP §§ 2106.05(a}-(c), (e}-(h). Nor do any other
limitations integrate the abstract ideas in such a manner. The claim,
therefore, is directed to mental processes, an abstract idea.
DOES THE CLAIM PROVIDE AN INVENTIVE CONCEPT?
As discussed above, the additional element of "creating a digital
model of a user's teeth, using a processor, based upon a scan of the user's
teeth" is a form of insignificant extra-solution activity. This limitation fails
to cause the claim to recite "significantly more" than the abstract ideas to
which the claim is directed because it fails to impose meaningful limits on
the claim such that those limits are not nominally or tangentially related to
the invention. Further, we agree with the Examiner (Ans. 10) that the
Specification describes this limitation as being implemented using
conventional computer hardware. See Spec. ,r 97. As such, the claim fails to
recite significantly more than the recited abstract ideas. See Alice, 134 S. Ct.
at 2357.
Thus, we sustain the Examiner's 35 U.S.C. § 101 rejection of claim 1.
For the same reasons we sustain the§ 101 rejection of claims 2-28, for
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which Appellants offer no substantive arguments separate from those
discussed above with respect to claim 1. See App. Br. 7-9.
For the foregoing reasons, we sustain the Examiner's 35 U.S.C. § 101
rejection of claims 1-28.
Rejection under 35 USC§ 103(a)
Appellants contend the combination of Sachdeva, Takatori, Taira, and
Hicks fails to teach or suggest "receiving one or more ranked personal
selection best match criteria associated with treatment professionals from the
user," as recited in claim 1. App. Br. 10-13. In particular, Appellants argue
the Examiner erred in finding Hicks teaches receiving one or more ranked
personal selection best match criteria, as required by claim 1. App.
Br. 11-12. Appellants argue "Hicks does not teach that any 'criteria
provided by the patient' is ranked [by the patient]." App. Br. 12 (bracketing
in original). We agree.
The Examiner finds "Appellant[ s '] claimed ranking is met by Hicks et
al. 's performing searches ... based on geographic area, specialty, and/or
other criteria provided by the patient." Ans. 6 ( emphasis omitted).
However, the Examiner's findings fail to explain how performing a search
based on criteria provided by a patient, as taught by Hicks, teaches or
suggests that the provided criteria are ranked, as required by claim 1. As
such, we are constrained by the record to not sustain the rejection of claim 1
under 35 U.S.C. § 103(a); independent claims 14 and 26, which recite
corresponding limitations; and claims 2-13, 15-25, 27, and 28, which
depend, directly or indirectly, from claims 1, 14, and 26.
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DECISION
We affirm the Examiner's rejection of claims 1-28 under 35 U.S.C.
§ 101.
We reverse the Examiner's rejection of claims 1-28 under 35 U.S.C.
§ 103(a).
Since at least one rejection encompassing all claims on appeal is
affirmed, the decision of the Examiner is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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