Ex Parte Moctezuma de la Barrera

Patent Trial and Appeal Board

May 29, 2018

14013511 (P.T.A.B. May. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/013,511 08/29/2013 Jose Luis Moctezuma de la Barrera
27305 7590 05/31/2018
HOW ARD & HOW ARD ATTORNEYS PLLC
450 West Fourth Street
Royal Oak, MI 48067
UNITED ST A TES OF AMERICA
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.
060500.00202 2109
EXAMINER
RAJ,RAJIV J
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
05/31/2018 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSE LUIS MOCTEZUMA DE LA BARRERA
Appeal2017-000890
Application 14/013,511 1
Technology Center 3600
Before JOSEPH A. FISCHETTI, MICHAEL W. KIM, and
NINA L. MEDLOCK, Administrative Patent Judges.
FISCHETTI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner's
final rejection of claims 31-39, 41-50, and 53. 2 We have jurisdiction under
35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
1 Appellant identifies Stryker Leibinger GmbH & Co. KG as the real party in
interest. Appeal Br. 1.
2 Claims 1-30, 40, 51, and 52 have been canceled. Appeal Br. 3.
Appeal2017-000890
Application 14/013,511
THE INVENTION
Appellant's claims relate "to expert systems and methods and
particularly expert systems that are usable in a surgical environment."
Specification 1:4--5.
Claim 31, reproduced below, is representative of the subject matter on
appeal.
31. A reactive workflow system to determine a consequent
step within a multi-step surgical procedure comprising a first
sequence of steps, the reactive workflow system comprising:
a computer navigation system comprising a processor, a
memory unit, a camera, a tracking device, and a display unit,
wherein the computer navigation system is configured to:
identify a current step of the multi-step surgical
procedure;
identify a surgical component usable in the multi-step
surgical procedure with the tracking device and the camera;
analyze whether the surgical component is acceptable for
use in steps of the multi-step surgical procedure including a
step other than the current step or an immediately subsequent
step in the first sequence of steps;
determine the consequent step within the multi-step
surgical procedure based on the identity of the surgical
component and the current step; and
display one or more parameters related to the consequent
step and the identified surgical component on the display unit.
THE REJECTIONS
The following rejections are before us for review.
Claims 31-39, 41-50, and 53 are rejected under 35 U.S.C. § 101.
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Claims 31-39 and 41-503 are rejected under 35 U.S.C. § 112(a) or
pre-AIA 35 U.S.C. § 112, first paragraph.
ANALYSIS
35 U.S.C. § 101 REJECTION
We will sustain the rejection of claims 31-39, 41-50, and 53 under
35 U.S.C. § 101.
The Supreme Court
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. First, ...
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. If so, we then ask, "[ w ]hat
else is there in the claims before us?" To answer that question,
... 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. [The Court] described step two of
this analysis 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."
Alice Corp., Pty. Ltd. v CLS Banklnt'l, 134 S. Ct. 2347, 2355 (2014) (citing
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72-73,
78-79 (2012)).
To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept.
3 Although the rejection (Answer 2) indicates that claims 31-50 stand
rejected, the Claims Appendix page 18 shows that claim 40 is cancelled.
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Although the Court in Alice made a direct finding as to what the
claims were directed to, we find that this case's claims themselves and the
Specification provide enough information to inform one as to what they are
directed.
The steps in claim 31 result in: determin[ing] the consequent step
within the multi-step surgical procedure based on the identity of the surgical
component and the current step; and display[ing] one or more parameters
related to the consequent step and the identified surgical component on the
display unit.
The Specification further states,
Another aspect of the present invention is a system for
assisting with a surgical procedure that comprises a first circuit
to identify a context within a multi-step surgical procedure.
The system includes a second circuit to identify a component
that is usable within the procedure. Lastly, the system has a
third circuit that determines a consequent step in the procedure
based on the identity of the component and the context.
Specification 1 :25-29. Thus, all this evidence of record shows that claim 31
is directed to determining whether a surgical component is acceptable for
use in steps of a multi-step surgical procedure, and determining the
consequent step within the multi-step surgical procedure based on the
identity of the surgical component and the current step. It follows from prior
Supreme Court cases, and Gottschalkv. Benson, 409 U.S. 63 (1972) in
particular, that the claims at issue here are directed to an abstract idea.
Determining the steps of a multi-step surgical operation and predicting a
next step based on the present step being executed and tool being used,
represents a method of organizing human behavior, which is not patentable
subject matter. See Alice Corp. Pty. Ltd., 134 S. Ct. at 2355-56.
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Also, we find the steps of "identify[ ing] a current step of the multi-
step surgical procedure"; "identify[ing] a surgical component usable in the
multi-step surgical procedure"; "analyz[ing] whether the surgical component
is acceptable for use in steps of the multi-step surgical procedure including a
step other than the current step or an immediately subsequent step in the first
sequence of steps"; and "determin[ing] the consequent step within the multi-
step surgical procedure based on the identity of the surgical component and
the current step" constitute physical acts by a human and/or "analyzing
information by steps people go through in their minds, or by mathematical
algorithms, without more, as essentially mental processes within the
abstract-idea category." Electric Power Grp., LLC v. Alstom S.A., 830 F.3d
1350, 1354 (Fed. Cir. 2016); see also buySAFE, Inc. v. Google, Inc.,
765 F.3d 1350 (Fed. Cir. 2014) (claims directed to certain arrangements
involving contractual relations are directed to abstract ideas). Thus,
determining the steps of a multi-step surgical operation and predicting a next
based on the present step being executed and tool being used, is an "abstract
idea" beyond the scope of § 101.
As in Alice, we need not labor to delimit the precise contours of the
"abstract ideas" category in this case. It is enough to recognize that there is
no meaningful distinction in the level of abstraction between the concept of
an intermediated settlement in Alice, and the concept of determining the
steps of a multi-step surgical operation and predicting a next, consequent
step based on a present step and tool, at issue here. Both are squarely within
the realm of "abstract ideas" as the Court has used that term. That the
claims do not preempt all forms of the abstraction or may be limited to a
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surgical procedure, does not make them any less abstract. See OIP Techs.,
Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1360-61 (Fed. Cir. 2015).
The introduction of a computer into the claims does not alter the
analysis at Mayo step two.
[T]he mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea "while adding the words 'apply it"' is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea "'to a particular technological environment."'
Stating an abstract idea while adding the words "apply it with a
computer" simply combines those two steps, with the same
deficient result. Thus, if a patent's recitation of a computer
amounts to a mere instruction to "implement[ t ]" an abstract
idea "on ... a computer," that addition cannot impart patent
eligibility. This conclusion accords with the pre-emption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of "additional
feature[ e ]" that provides any "practical assurance that the
process is more than a drafting effort designed to monopolize
the [ abstract idea] itself."
Alice Corp. Pty. Ltd., 134 S. Ct. at 2358 (alterations in original) (citations
omitted).
"[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea ... on a
generic computer." Alice Corp. Pty. Ltd., 134 S. Ct. at 2359. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to take in data, compute a result, and return the result to a user
amounts to electronic data query and retrieval-some of the most basic
functions of a computer. All of these computer functions are
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well-understood, routine, conventional activities previously known to the
industry. In short, each step does no more than require a generic computer
to perform generic computer functions.
Considered as an ordered combination, the computer components of
Appellant's claims add nothing that is not already present when the steps are
considered separately. The sequence of data reception-analysis-access is
equally generic and conventional or otherwise held to be abstract. See
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014)
(sequence of receiving, selecting, offering for exchange, display, allowing
access, and receiving payment recited an abstraction), Inventor Holdings,
LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017)
(sequence of data retrieval, analysis, modification, generation, display, and
transmission), Two-Way Media Ltd. v. Comcast Cable Communications,
LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (sequence of processing, routing,
controlling, and monitoring). The ordering of the steps is, therefore,
ordinary and conventional.
Viewed as a whole, Appellant's claims simply recite the concept of
determining the steps of a multi-step surgical operation and predicting a next
consequent step based on a present step and tools being used. The claims do
not, for example, purport to improve the functioning of the computer itself.
Nor do they effect an improvement in any other technology or technical
field. Instead, the claims at issue amount to nothing significantly more than
instructions to determine the steps of a multi-step surgical operation and
predicting a next consequent step based on a present step and the tool being
used. Under our precedents, that is not enough to transform an abstract idea
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into a patent-eligible invention. See Alice Corp. Pty. Ltd., 134 S. Ct.
at 2360.
As to the structural claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long "warn[ ed] . . . against" interpreting § 101
"in ways that make patent eligibility 'depend simply on the
draftsman's art."'
Alice Corp. Pty. Ltd., 134 S. Ct. at 2360 (alterations in original) (citation
omitted).
We have reviewed all the arguments (Appeal Br. 10-15) Appellant
has submitted concerning the patent eligibility of the claims before us which
stand rejected under 35 U.S.C. § 101. We find that our analysis above
substantially covers the substance of all the arguments that have been made.
But, for purposes of completeness, we will address various arguments in
order to make individual rebuttals of same.
Appellant argues,
each of these independent claims recites tangible components
that are each configured to perform specific and concrete
functions, including a navigation system that includes a camera
and a tracking device ( claims 31, 49, and 50) or including a
navigation system includes an RFID ( claim 53), where the
navigation system is configured to identify a surgical
component.
Appeal Br. 13.
We disagree with Appellant because limiting the field of use of the
abstract idea to a particular existing technological environment does not
render the claims any less abstract." Affinity Labs of Tex., LLC v. DIRECTV,
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LLC, 838 F.3d 1253, 1258 (Fed. Cir. 2016) (citing Alice Corp. Pty. Ltd., 134
St. Ct. at 2358); Mayo, 566 U.S. at 72-73).
Appellant further argues that, "the recited reactive workflow system
recites that the navigation system is configured to perform the
unconventional step of identifying the surgical component with the tracking
device and camera ( or RFID) which confines the scope claim to surgical
applications." Appeal Br. 14--15.
We are not persuaded by Appellant's argument here because, again,
Appellant's argument merely addresses the intended use of otherwise
conventional system components, in that they do not constitute significantly
more limitations. See Affinity Labs of Tex., LLC 838 F.3d at 1258. To this
point, we find the Examiner's explanation complete and agree with the
Examiner's findings that:
[t]he claim(s) does/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 that performs generic computer functions that are
well- understood, routine, and conventional activities
previously known to the industry. See [p.3-6] of the
Specification, which discloses a generic computer system
consisting of processors, memory units, cameras, tracking
devices & display units. The generic computer functions (i.e.
selecting data, capturing data, presenting data, identifying data,
analyzing data, etc.) which do not add meaningful limitations to
the idea of comparing new & stored information and using the
rules to identify options beyond generally linking the system to
a particular technological environment that is implemented via
the generic computer system.
Final Act. 2-3.
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35 U.S.C. § 112(A) OR 35 U.S.C. § 112 (PRE-AIA),
FIRST PARAGRAPH REJECTION
The Examiner rejected claims 31-39 and 41-50 under 35 U.S.C.
§ 112, first paragraph, because "[ t ]he claims recite 'determined whether a
surgical component is acceptable or not acceptable.' Applicant's
Specification fail[ s] to disclose as to what factors are used or what type of
analysis is done to make the determination." Answer 2. The Examiner
further finds that "[ t ]he specification is silent in regards to what factors or
standards are used or what type of analysis is done to make the
determination." Id. at 2-3.
Appellant, however, argues that the Specification at page 3, lines 16-
18 provides support for the claim limitation involved in the rejection.
Specifically, Appellant cites to the description of an exemplary embodiment,
which states that "[i]f a future step is located that matches the tool, control
will pass to a block 162 that jumps to the identified future step and the
routine goes back to the main program." Reply Br. 2.
We agree with Appellant. We find that matching a tool qualifies as a
factor for acceptance, or not, because "matching" connotes a determining
step and hence provides sufficient basis for the claim language in question.
Therefore, we will not sustain the Examiner's rejection under this section.
CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 31-39,
41-50, and 53 under 35 U.S.C. § 101.
We conclude the Examiner erred in rejecting claims 31-39 and 41-50
under 35 U.S.C. § 112.
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DECISION
The decision of the Examiner to reject claims 31-39, 41-50, and 53 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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