Ex Parte Nigam et al

Patent Trials and Appeals Board

May 10, 2019

13831934 - (D) (P.T.A.B. May. 10, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
13/831,934
71897
KPPBLLP
7590
FILING DATE
03/15/2013
05/14/2019
2190 S. Towne Centre Place
Suite 300
Anaheim, CA 92806
FIRST NAMED INVENTOR
ShahNigam
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.
S31-03916 2301
EXAMINER
BURGESS, JOSEPH D
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
05/14/2019 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):
P AIR@KPPB.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHAH NIGAM,
LEPENDU P AEA,
BAUER-MERREN ANNA,
and IYER SRINIVASAN
Appeal2017-008102
Application 13/831,9341
Technology Center 3600
Before ANTON W. PETTING, BRUCE T. WIEDER, and
MATTHEWS. MEYERS, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
1 According to Appellants, the real party in interest is The Board of Trustees
of the Leland Stanford Junior University (Appeal Br. 3).
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Application 13/831,934
STATEMENT OF THE CASE2
Shah Nigam, LePendu Paea, Bauer-Mehren Anna, and Iyer Srinivasan
(Appellants) seek review under 35 U.S.C. § 134 of a final rejection of claims
1 and 22-41 3, the only claims pending in the application on appeal. We
have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
The Appellants invented a way of analyzing the contents of digital
medical records. Specification para. 2.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A computer-implemented method for analyzing digital
medical records, comprising:
[ 1] receiving a set of clinical notes data
describing patient encounters for a plurality of patients
using a computer system;
[2] annotating the set clinical notes data
using the computer system according to at least one
ontology of biomedical concepts,
wherein annotating the set of clinical notes data
compnses:
2 Our decision will make reference to the Appellants' Appeal Brief ("App.
Br.," filed November 11, 2016) and Reply Brief ("Reply Br.," filed May 8,
2017), and the Examiner's Answer ("Ans.," mailed March 7, 2017), and
Final Action ("Final Act.," mailed February 10, 2016).
3 Claims 1 and 22-41 are pending. Final Act. 1. The Examiner states that
"[ c ]laims 1 and 22-41 would be allowable if rewritten or amended to
overcome the rejections under 35 U.S.C. 101 set forth in this Office Action."
Id. at 10. Therefore, we treat the statement that"[ c ]laims 1 and 22-40 are
rejected under 35 U.S.C. 101" (id. at 3) as a typographical error.
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[2.1] chronologically scanning the annotated set of
clinical notes data using the computer system;
[2 .2] recording timestamps for mentions of
biomedical concepts in each of the annotated
timelines using the computer system;
and
[2.3] defining index timepoints for a particular
treatment for patients using the recorded
timestamps and the computer system;
[3] grouping the annotated clinical notes data for the plurality of
patients using the computer system into two groups:
([3.] 1) a pre-timepoint set of annotated clinical notes data
with biomedical concepts that have recorded timestamps
prior to the index timepoint for each of the plurality of
patients
and
([3.]2) a post-timepoint set of annotated clinical notes
data with biomedical concepts that have recorded
timestamps prior the [sic] index timepoint for each of the
plurality of patients;
[ 4] identifying a case group of patients
based upon the pre-timepoint set of annotated clinical
notes data that indicate receipt of a particular treatment
using the computer system:
[5] constructing a patient-feature matrix
from the pre-timepoint set of annotated clinical notes
data
indicating patients and the presences of biomedical
concepts in the annotated clinical notes data for the
patients using the computer system;
[ 6] identifying a control group of patients
based on a computation of pairwise patient similarity
scores computed utilizing features within the annotated
clinical notes data of the case group of patients and each
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other patient utilizing the patient-feature matrix and the
computer system;
[7] separately computing co-occurrence statistics
for the biomedical concepts in
the annotated clinical notes data of the case group
of patients
and
the control group of patients
using the computer system;
[8] constructing a case concept-concept association network
based on the computed co-occurrence statistics for the
case group of patients using the computer system;
[9] constructing a control concept-concept association network
based on the computed co-occurrence statistics for the
control group of patients using the computer system;
and
[ 10] comparing the case concept-concept association network
and the control concept-concept association network
in order to quantify risks of a chosen outcome related to
the particular treatment using the computer system.
Claims 1 and 22-41 stand rejected under 35 U.S.C. § 101 as directed
to a judicial exception without significantly more.
The rejection of claims 1 and 22-41 is affirmed.
ISSUES
The issues of eligible subject matter tum primarily on whether the
claims recite more than abstract conceptual advice of results desired.
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ANALYSIS
CLAIM CONSTRUCTION
We initially construe the undefined term "timepoint" recited in the
claims. The word itself is a combination of the words "time" and "point"
and so appear to be equivalent to a time point, which is a point in time. All
recitations of "timepoint" in the claims either use the word as a noun with
the word "index" preceding it, as in "index timepoint," or as an adjective
modifying the word "set" as in "pre-timepoint set" and "post-timepoint set."
The usage therefore suggests that a timepoint is a point in time used as some
index to separate sets of data into sets prior to the point in time and sets after
the point in time. Specification paragraph 213 describes the one example of
a timepoint in the drawings as reference 1402 in Figure 14, which is a point
along a time line that separates the ranges of time before and after that point.
Accordingly we construe a timepoint as a point in time to separate sets of
data into sets prior to the point in time and sets after the point in time.
A concept-concept association network is lexicographically defined as
nodes in the network that represent the clinical concepts ( drugs, diseases,
devices, and procedures) and the edges that represent their associations.
Spec. para. 220. Thus a concept-concept association network is a data
collection metaphorically representing a graph or mesh of nodes and edges
and is not a network of computers.
Claim 1 recites "recording timestamps for mentions of biomedical
concepts in each of the annotated timelines." Claim 1 does not recite such
annotated timelines, so this is an ambiguous reference. We take this to refer
to data resulting from the preceding step of "chronologically scanning the
annotated set of clinical notes data."
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Claims 1 and 22--41 rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more.
STEP 14
Claim 1, as a method claim, nominally recites one of the enumerated
categories of eligible subject matter in 35 U.S.C. § 101. The issue before us
is whether it is directed to a judicial exception without significantly more.
STEP2
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 Bank Intl, 573 U.S. 208, 217-18 (2014)
(citations omitted) (citing Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012)). To perform this test, we must first
determine what the claims are directed to. This begins by determining
4 For continuity of analysis, we adopt the steps nomenclature from 2019
Revised Patent Subject Matter Eligibility Guidance, 84 FR 50 (Jan. 7, 2019)
("Revised Guidance").
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whether the claims recite one of the judicial exceptions (a law of nature, a
natural phenomenon, or an abstract idea). Then, if claims recite a judicial
exception, determining whether the claims at issue are directed to the recited
judicial exception, or whether the recited judicial exception is integrated into
a practical application of that exception, i.e., that the claims "apply, rely on,
or use 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." Revised Guidance at 54. If
the claims are directed to a judicial exception, then finally determining
whether the claims provide an inventive concept because the additional
elements recited in the claims provide significantly more than the recited
judicial exception.
STEP 2A Prong 1
At a high level, and for our preliminary analysis, we note that method
claim 1 recites receiving and annotating notes data, grouping the data into
two groups, identifying a case group of patients, constructing a data matrix,
identifying a control group, computing co-occurrence statistics, constructing
a case and a control case-concept association network, and comparing the
networks. Annotating data is updating data. Grouping, identifying and
constructing a matrix of data are rudimentary forms of generic analysis.
Computing statistics is a form of mathematical algorithmic analysis.
Constructing and comparing metaphoric network graphs are similarly
generic analysis. Thus, claim 1 recites receiving, updating, and analyzing
data. None of the limitations recite technological implementation details for
any of these steps, but instead recite only results desired by any and all
possible means.
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From this we see that claim 1 does not recite the judicial exceptions of
either natural phenomena or laws of nature.
Under Supreme Court precedent, claims directed purely to an abstract
idea are patent in-eligible. As set forth in the Revised Guidance, which
extracts and synthesizes key concepts identified by the courts, abstract ideas
include (1) mathematical concepts5, (2) certain methods of organizing
human activity6, and (3) mental processes 7. Among those certain methods of
mathematical concepts listed in the Revised Guidance are mathematical
algorithms. Like those concepts, claim 1 recites the concept of calculating
mathematical risk estimates. Specifically, claim 1 recites operations that
would ordinarily take place in advising one to compute risk statistics by
comparing data in case and control groups in tum computed from co-
occurrence statistics from clinical notes data that are separated by a point in
time from case and control sets of patients. The advice to compute risk
statistics by comparing data in case and control groups in tum computed
from co-occurrence statistics from clinical notes data that are separated by a
point in time from case and control sets of patients involves computing risk
5 See, e.g., Gottschalkv. Benson, 409 U.S. 63, 71-72 (1972); Bilski v.
Kappas, 561 U.S. 593, 611 (2010); Mackay Radio & Telegraph Co. v. Radio
Corp. of Am., 306 U.S. 86, 94 (1939); SAP Am., Inc. v. InvestPic, LLC, 898
F.3d 1161, 1163 (Fed. Cir. 2018).
6 See, e.g., Bilski, 561 U.S. at 628; Alice, 573 U.S. at 219-20; Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014); Smart Sys.
Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1383 (Fed. Cir.
2017); In re Marco Guldenaar Holding B. V., 911 F.3d 1157, 1160-61 (Fed.
Cir. 2018).
7 See, e.g., Benson, 409 U.S. at 67; CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1371-72 (Fed. Cir. 2011); Intellectual Ventures I LLC
v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016).
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statistics, which is a mathematical calculation of risk, and computing co-
occurrence statistics, which is an act ordinarily performed in the stream of
statistical analysis. For example, claim 1 recites "quantify risks of a chosen
outcome," which is an activity that would take place whenever one is
computing risk statistics. Similarly, claim 1 recites "computing "co-
occurrence statistics," which are also characteristics of mathematical
statistics computations.
The Examiner determines the claims to be directed to comparing
patient groups to quantify the risk of outcomes related to adverse multi-drug
and/or treatment interaction using data from annotated patient medical
records to determine the patient groups. Ans. 4.
The preamble to claim 1 recites that it is a method for analyzing
digital medical records. The steps in claim 1 result in quantifying risks of a
chosen outcome related to the particular treatment absent any technological
mechanism other than a conventional computer for doing so.
As to the specific limitations, limitation 1 recites generic data
gathering and limitation 2 recites generic annotations and analysis to update
the gathered data. Limitations 3-6 recite generic analyzing of patient data
co-occurrence statistics from clinical notes data that are separated by a point
in time from case and control sets of patients, which advise one to apply
generic functions to get to these results. Limitations 7-10 recite a series of
mathematical algorithms to compute quantitative (i.e., numeric) risk
estimates by comparing data in case and control groups in tum computed
from co-occurrence statistics. The limitations thus recite advice for
computing risk statistics by comparing data in case and control groups in
tum computed from co-occurrence statistics from clinical notes data that are
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separated by a point in time from case and control sets of patients. To
advocate computing risk statistics by comparing data in case and control
groups in tum computed from co-occurrence statistics from clinical notes
data that are separated by a point in time from case and control sets of
patients is conceptual advice for results desired and not technological
operations.
The Specification at paragraph 2 describes the invention as relating to
analyzing the contents of digital medical records. Thus, all this intrinsic
evidence shows that claim 1 is directed to calculating mathematical risk
estimates. This is consistent with the Examiner's determination.
This in tum is an example of a mathematical concept because the
steps of computing co-occurrence statistics, placing them in a metaphoric
network, and computing risk estimates by comparing the statistics
perform a mathematical algorithm. The remaining steps are mere data
gathering and incidental post processing steps. The steps recited in claim 1
are part of how this might conceptually be premised.
Our reviewing court has found claims to be directed to abstract ideas
when they recited similar subject matter. Cleveland Clinic Foundation v.
True Health Diagnostics LLC, 859 F.3d 1352, 1363 (Fed. Cir. 2017)
(computing statistical correlations); OIP Technologies, Inc. v. Amazon.com,
Inc., 788 F.3d 1359, 1362 (Fed. Cir. 2015) (gathering statistics).
Alternately, this is an example of concepts performed in the human
mind as mental processes because the steps of receiving, updating, and
analyzing data mimic human thought processes of observation, evaluation,
judgment, and opinion, perhaps with paper and pencil, where the data
interpretation is perceptible only in the human mind. See In re TL!
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Commc 'ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir.
2016). Claim 1, unlike the claims found non-abstract in prior cases, uses
generic computer technology to perform data reception, update, and analysis
and does not recite an improvement to a particular computer technology.
See, e.g., McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299,
1314-15 (Fed. Cir. 2016) ( finding claims not abstract because they "focused
on a specific asserted improvement in computer animation"). As such, claim
1 is directed to receiving, updating, and analyzing data, and not a
technological implementation or application of that idea.
From this we conclude that at least to this degree, claim 1 is directed
to calculating mathematical risk estimates by computing risk statistics by
comparing data in case and control groups in tum computed from co-
occurrence statistics from clinical notes data that are separated by a point in
time from case and control sets of patients, which is a mathematical
algorithm, one of mathematical concepts identified in the Revised Guidance,
and, thus, an abstract idea.
STEP 2A Prong 2
The next issue is whether claim 1 not only recites, but is more
precisely directed to this concept itself or whether it is instead directed to
some technological implementation or application of, or improvement to,
this concept i.e., integrated into a practical application. 8
At the same time, we tread carefully in construing this
exclusionary principle lest it swallow all of patent law. At
some level, "all inventions ... embody, use, reflect, rest upon, or
8 See, e.g., Alice, 573 U.S. at 223, discussing Diamond v. Diehr, 450 U.S.
175 (1981).
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apply laws of nature, natural phenomena, or abstract ideas."
Thus, an invention is not rendered ineligible for patent simply
because it involves an abstract concept. "[ A Jpplication[ s ]" of
such concepts "'to a new and useful end,"' we have said,
remain eligible for patent protection. Accordingly, in applying
the § 101 exception, we must distinguish between patents that
claim the "'buildin[g] block[s]"' of human ingenuity and those
that integrate the building blocks into something more.
Alice, 573 U.S. at 217 (citations omitted).
Taking the claim elements separately, the operation performed by the
computer at each step of the process is expressed purely in terms of results,
devoid of implementation details. Step 1 is a pure data gathering step.
Limitations describing the nature of the data do not alter this. Steps 2-6 just
categorize the data in preparation for mathematical computations. Steps 7-
10 recite generic computer processing for a mathematical algorithm
expressed in terms of results desired by any and all possible means and so
present no more than conceptual advice. All purported inventive aspects
reside in how the data is interpreted and the results desired, and not in how
the process physically enforces such a data interpretation or in how the
processing technologically achieves those results.
Viewed as a whole, Appellants' claim 1 simply recites the concept of
calculating mathematical risk estimates by computing risk statistics by
comparing data in case and control groups in tum computed from co-
occurrence statistics from clinical notes data that are separated by a point in
time from case and control sets of patients as performed by a generic
computer. This is no more than conceptual advice on the parameters for this
concept and the generic computer processes necessary to process those
parameters, and do not recite any particular implementation.
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Claim 1 does not, for example, purport to improve the functioning of
the computer itself. Nor does it effect an improvement in any other
technology or technical field. The Specification spell out different generic
equipment9 and parameters that might be applied using this concept and the
particular steps such conventional processing would entail based on the
concept of calculating mathematical risk estimates by computing risk
statistics by comparing data in case and control groups in tum computed
from co-occurrence statistics from clinical notes data that are separated by a
point in time from case and control sets of patients under different scenarios.
It does not describe any particular improvement in the manner a computer
functions. Instead, claim 1 at issue amounts to nothing significantly more
than an instruction to apply calculating mathematical risk estimates by
computing risk statistics by comparing data in case and control groups in
tum computed from co-occurrence statistics from clinical notes data that are
separated by a point in time from case and control sets of patients using
some unspecified, generic computer. Under our precedents, that is not
enough to transform an abstract idea into a patent-eligible invention. See
Alice, 573 U.S. at 225-26.
None of the limitations reflect an improvement in the functioning of a
computer, or an improvement to other technology or technical field, applies
or uses a judicial exception to effect a particular treatment or prophylaxis for
a disease or medical condition, implements a judicial exception with, or uses
a judicial exception in conjunction with, a particular machine or manufacture
9 The Specification describes any type of conventional processor,
microprocessor, or processing logic that interprets and executes instructions.
Spec. para. 50.
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that is integral to the claim, effects a transformation or reduction of a
particular article to a different state or thing, or applies or uses the judicial
exception in some other 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.
We conclude that claim 1 is directed to achieving the result of
calculating mathematical risk estimates by advising one to computing risk
statistics by comparing data in case and control groups in tum computed
from co-occurrence statistics from clinical notes data that are separated by a
point in time from case and control sets of patients, as distinguished from a
technological improvement for achieving or applying that result. This
amounts to mathematical algorithms, which fall within mathematical
concepts that constitute abstract ideas. The claim does not integrate the
judicial exception into a practical application.
STEP 2B
The next issue is whether claim 1 provides an inventive concept
because the additional elements recited in the claim provide significantly
more than the recited judicial exception.
The introduction of a computer into the claims does not generally alter
the analysis at Mayo step two.
the 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
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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 preemption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of "additional
featur[ e ]" that provides any "practical assurance that the
process is more than a drafting effort designed to monopolize
the [ abstract idea] itself."
Alice, 573 U.S. at 223-24 ( 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, 573 U.S. at 225. 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 for receiving, updating, and analyzing data amounts to electronic
data query and retrieval-one of the most basic functions of a computer. All
of these computer functions are generic, routine, conventional computer
activities that are performed only for their conventional uses. See Elec.
Power Grp. v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). Also see
In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303,
1316 (Fed. Cir. 2011) ("Absent a possible narrower construction of the terms
'processing,' 'receiving,' and 'storing,' ... those functions can be achieved
by any general purpose computer without special programming"). None of
these activities are used in some unconventional manner nor do any produce
some unexpected result. Appellants do not contend they invented any of
these activities. In short, each step does no more than require a generic
computer to perform generic computer functions. As to the data operated
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upon, "even if a process of collecting and analyzing information is 'limited
to particular content' or a particular 'source,' that limitation does not make
the collection and analysis other than abstract." SAP America, Inc. v.
InvestPic LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018).
Considered as an ordered combination, the computer components of
Appellants' claim 1 add nothing that is not already present when the steps
are considered separately. The sequence of data reception-update-analysis is
equally generic and conventional. 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.
We conclude that claim 1 does not provide an inventive concept
because the additional elements recited in the claim do not provide
significantly more than the recited judicial exception.
REMAINING CLAIMS
Claim 1 is representative. The remaining method claims merely
describe process parameters. We conclude that the method claims at issue
are directed to a patent-ineligible concept itself, and not to the practical
application of that concept.
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
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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 § 10 I "in
ways that make patent eligibility 'depend simply on the
draftsman's art. '"
Alice, 573 U.S. at 226. As a corollary, the claims are not directed to any
particular machine.
LEGAL CONCLUSION
From these determinations we further determine that the claims do not
recite an improvement to the functioning of the computer itself or to any
other technology or technical field, a particular machine, a particular
transformation, or other meaningful limitations. From this we conclude the
claims are directed to the judicial exception of the abstract idea of
mathematical concepts as exemplified by the mathematical algorithm of
calculating mathematical risk estimates by computing risk statistics by
comparing data in case and control groups in tum computed from co-
occurrence statistics from clinical notes data that are separated by a point in
time from case and control sets of patients, without significantly more.
APPELLANTS' ARGUMENTS
Although Appellants' Appeal Brief arguments nominally begin at
page 8, pages 8-23 are prefatory only. Substantive arguments being at
Appeal Brief 24.
We are not persuaded by Appellants' argument that the recited steps
are not shown to be well understood, routine, and conventional activities
previously known to the industry. App. Br. 24-29. We cite evidentiary case
law supra to support this determination.
Appellants further argue that the asserted claims are akin to the
claims found patent-eligible in DDR Holdings, LLC v. Hotels.com, L.P.
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773 F.3d 1245 (Fed. Cir. 2014). App. Br. 31-32. In DDR Holdings, the
Court evaluated the eligibility of claims "address[ing] the problem of
retaining website visitors that, if adhering to the routine, conventional
functioning of Internet hyperlink protocol, would be instantly
transported away from a host's website after 'clicking' on an
advertisement and activating a hyperlink." Id. at 1257. There, the Court
found that the claims were patent eligible because they transformed the
manner in which a hyperlink typically functions to resolve a problem
that had no "pre-Internet analog." Id. at 1258. The Court cautioned,
however, "that not all claims purporting to address Internet-centric
challenges are eligible for patent." Id. For example, in DDR Holdings the
Court distinguished the patent-eligible claims at issue from claims found
patent-ineligible in Ultramercial. See id. at 1258-59 (citing Ultramercial,
Inc., 772 F.3d at 715-16). As noted there, the Ultramercial claims were
"directed to a specific method of advertising and content distribution that
was previously unknown and never employed on the Internet before." Id.
at 1258 (quoting Ultramercial, 772 F.3d at 715-16). Nevertheless, those
claims were patent ineligible because they "merely recite[ d] the abstract
idea of 'offering media content in exchange for viewing an advertisement,'
along with 'routine additional steps such as updating an activity log,
requiring a request from the consumer to view the ad, restrictions on public
access, and use of the Internet."' Id.
Appellants' asserted claims are analogous to claims found ineligible
in Ultramercial and distinct from claims found eligible in DDR Holdings.
The ineligible claims in Ultramercial recited "providing [a] media product
for sale at an Internet website;" "restricting general public access to said
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media product;" "receiving from the consumer a request to view [a]
sponsor message;" and "if the sponsor message is an interactive message,
presenting at least one query to the consumer and allowing said consumer
access to said media product after receiving a response to said at least one
query." 772 F.3d at 712. Similarly, Appellants' asserted claims recite
receiving, updating, and analyzing data. This is precisely the type of
Internet activity found ineligible in Ultramercial.
We are not persuaded by Appellants' argument that the claims are
analogous to those in Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed.
Cir. 2016). App. Br. 32-34. The claims differ from those found patent
eligible in Enfish, where the claims were "specifically directed to a self-
referential table for a computer database." Enfish, LLC, 822 F.3d at
1337. The claims thus were "directed to a specific improvement to the
way computers operate" rather than an abstract idea implemented on a
computer. Id. at 1336. Here, by contrast, the claims are not directed to
an improvement in the way computers operate. Though the claims
purport to accelerate and make more accurate the process of computing
risk estimates, our reviewing court has held that speed and accuracy
increases stemming from the ordinary capabilities of a general purpose
computer "do[] not materially alter the patent eligibility of the claimed
subject matter." Bancorp Servs., L.L. C. v. Sun Life Assurance Co. of Can.
(U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012). Instead, the claims are
more analogous to those in FairWarning, 839 F.3d 1089 (Fed. Cir. 2016),
wherein claims reciting "a few possible rules to analyze audit log data"
were found directed an abstract idea because they asked "the same
questions ( though perhaps phrased with different words) that humans in
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analogous situations detecting fraud have asked for decades." 839 F.3d at
1094, 1095.
We are not persuaded by Appellants' argument that Cal. Inst of Tech.
v Hughes Communs. Inc., 2014 U.S. Dist. LEXIS 156763 (C.D. Cal., Nov.
3, 2014) shows the claims to be non-abstract. This is a District Court case
with different facts and its holdings are not controlling in this instance.
Appellants also attempt to analogize the claims to those involved in
McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed.
Cir. 2016). Reply Br. 3 7-40. In McRO, the court held that, although the
processes were previously performed by humans, "the traditional process
and newly claimed method ... produced ... results in fundamentally
different ways." FairWarning v. Iatric Systems, 839 F.3d 1089, 1094
(Fed. Cir. 2016) (differentiating the claims at issue from those in McRO).
In McRO, "it was the incorporation of the claimed rules not the use of the
computer, that improved the existing technology process," because the
prior process performed by humans "was driven by subjective
determinations rather than specific, limited mathematical rules." 83 7 F .3 d
at 1314 (internal quotation marks, citation, and alterations omitted). In
contrast, the claims of the instant application merely implement an old
practice of using decision criteria in making statistical analysis in a new
environment. Appellants have not argued that the claimed processes of
selecting notes apply rules of selection in a manner technologically
different from those which humans used, albeit with less efficiency, before
the invention was claimed. Merely pigeon holing the objects of decision
making in tiers to aid decision making is both old and itself abstract.
The claims in McRO were not directed to "a specific asserted
improvement in computer animation, i.e., the automatic use of
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rules of a particular type." We explained that "the claimed
improvement [was] allowing computers to produce 'accurate
and realistic lip synchronization and facial expressions in
animated characters' that previously could only be produced by
human animators." The claimed rules in McRO transformed a
traditionally subjective process performed by human artists into
a mathematically automated process executed on computers.
FairWarning, 839 F.3d at 1094 (differentiating the claims at issue from
those in McRO).
We are not persuaded by Appellants' argument that the claims provide
improved information results. App. Br. 40-48. Abstract ideas in the form of
advice are often useful. The aphorism "a stitch in time saves nine" is the
basis of a multi-billion dollar preventative maintenance industry. This does
not make the advice any less abstract. The issue is whether the claims recite
technological use of the advice beyond simply providing the useful
information.
We are not persuaded by Appellants' argument that the claims contain
an inventive concept that is also found in the specific ordered combination
of the limitations, similar to the Federal Circuit's findings in BASCOM
(Bascom Global Internet v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir.
2016)). Reply Br. 48-50. Initially, we remind Appellants that Bascom did
not find claims eligible on the substance, but rather that the Appellees did
not provide sufficient evidence to support a l 2(b )( 6) motion to dismiss in
which facts are presumed in the non-movant's favor.
The key fact in Bascom was the presence of a structural change in
"installation of a filtering tool at a specific location, remote from the end-
users, with customizable filtering features specific to each end user. This
design gives the filtering tool both the benefits of a filter on a local computer
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and the benefits of a filter on the ISP server." Bascom, 827 F.3d at 1350.
The instant claims have no analogous structural benefit.
As to Research Corp. Techs., Inc. v. Microsoft Corp., 627 F .3d 859
(Fed. Cir. 2010), argued by Appellants, App. Br. 50-51,
The principal precedent relied on by Bancorp in arguing for
patent eligibility is Research Corp. In that case, the asserted
patents claimed processes for enabling a computer to render a
halftone image of a digital image by comparing, pixel by pixel,
the digital image against a two-dimensional array called a
"mask." 627 F.3d at 863. We reversed the district court's grant
of summary judgment that the asserted claims were invalid
under § 1 01, concluding that the processes were not "so
manifestly" abstract as to override the statutory language of
§ 101. Id. at 868. In so holding, we observed that the claimed
"invention presents functional and palpable applications in the
field of computer technology." Id. We also noted that
"inventions with specific applications or improvements to
technologies in the marketplace are not likely to be so abstract"
as to be ineligible for patent protection. Id. at 869.
Research Corp. is different from the present case in two critical
respects. First, the claimed processes in Research Corp. plainly
represented improvements to computer technologies in the
marketplace. For example, as compared to the prior art, the
"inventive mask produce[ d] higher quality halftone images
while using less processor power and memory space." Id. at
865. No such technological advance is evident in the present
invention. Rather, the claims merely employ computers to
track, reconcile, and administer a life insurance policy with a
stable value component-i.e., the computer simply performs
more efficiently what could otherwise be accomplished
manually. Bancorp, 771 F.Supp.2d at 1065.
Second, the method in Research Corp., which required the
manipulation of computer data structures ( the pixels of a digital
image and the mask) and the output of a modified computer
data structure (the halftoned image), was dependent upon the
computer components required to perform it. See CyberSource,
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654 F.3d at 1376 ("[T]he method [in Research Corp.] could
not, as a practical matter, be performed entirely in a human's
mind."). Here, in contrast, the computer merely permits one to
manage a stable value protected life insurance policy more
efficiently than one could mentally. Using a computer to
accelerate an ineligible mental process does not make that
process patent-eligible.
Bancorp Services, L.L.C. v. Sun Life Assur. Co. of Canada, 687 F.3d
1266, 1278-10279 (Fed. Cir. 2012). Analogous to the claims in Bancorp,
the instant claims merely employ computers to track, reconcile, and
administer clinical note entries-i.e., the computer simply performs more
efficiently what could otherwise be accomplished manually, and the
computer merely permits one to manage a computation of statistics more
efficiently than one could mentally.
We are not persuaded by Appellants' argument that claims that
describe the creation of new data in defined data structures,
which is more than the mere collection, comparison, and
organization of data since the new data are not found in the
original input data set. Appellant respectfully submits that this
creation of new data with defined data structures in accordance
with specific rules is neither an abstract idea nor a "mentally
abstract process" and is therefore patent eligible subject matter
under§ 101.
Reply Br. 3. The claims do not define any data structure. At best, the
claims recite "recording timestamps for mentions of biomedical concepts in
each of the annotated timelines," defining index timepoints, "grouping the
annotated clinical notes data ... into two groups," "constructing a
patient-feature matrix" and "constructing a control concept-concept
association network." None of these define how the data is structured or
otherwise structurally related to one another. These recitations are no more
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than advice to record times, record certain timepoints, group data, and
construct a matrix and a network, both of which are exemplars of graphs as
an abstract data type, devoid of implementation details in themselves. The
first of these recitations recites "annotated timelines" which themselves are
unsupported and cannot connote structure at least for that reason.
We are not persuaded by Appellants' argument that
the creation of data should be considered the least mentally
abstract since the creation of data requires inputs of rules and
sometimes data to determine the form and content of the new
data and can produce different data depending on the
circumstances. Thus, the creation of new data is not a purely
mental activity or mentally abstract process that can be
performed in the human mind.
Reply Br. 3. Appellants conflate two issues - the patentable weight of
creating data per se and the technological implementation for doing so. We
agree with Appellants that a recitation of how data is created could be non-
abstract were the technological implementation details recited. Such details
are missing in the claims. We do not agree that the creation of new data per
se is non-abstract. "[T]he meaning of the data is perceptible only to the
human mind and afforded no patentable weight. See In re Bernhart, 417
F.2d 1395, 1399 (CCPA 1969). "Information, whether displayed in the form
of price values or P&L values, is abstract." Trading Technologies
International, Inc. v. !BG LLC, 2019 \VL 1907236 (Fed Cir April 30, 2019).
Even if the data is new, this is insufficient "Even if no trading screen had
previously displayed P&L values, ·a claimed invention's use of the
ineligible concept to which it is directed cannot supply the inventive concept
that renders the invention "significantly more" than that ineligible concept"'
Id. ( citations omitted).
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We are not persuaded by Appellants' argument that
Comparing the currently pending claims to those at issue in
Myriad CAFC, the currently pending claims recite much more
than the abstract idea of "comparing information regarding a
sample or test subject to a control or target data" "abstract
mental process" steps of "analyzing" or "comparing." For
example, independent claim 1 recites steps of "constructing a
case concept-concept association network" and "constructing a
control concept-concept association network." The construction
of data structures containing new data that is different from the
input data are more than mere "abstract mental processes." The
data creation requires specific rules and steps to form an
appropriate data structure in accordance with the claim.
Therefore, independent claim 1 can be characterized as using
steps of comparing and analyzing data in a process that also
creates new data to form a non-abstract application.
Reply Br. 6. The rules and steps are specific only in the sense they are
specified using words. The recited steps are broad, generic, and omit
technological implementation details. The remainder of the argument is a
repletion of the above arguments and are equally unpersuasive here.
The remainder of the Reply Brief either repeats arguments from the
Appeal Brief or argues pertinence of case law Examiner cites that is not
brought up in the above analysis.
CONCLUSIONS OF LAW
The rejection of claims 1 and 22-41 under 35 U.S.C. § 101 as directed
to a judicial exception without significantly more is proper.
DECISION
The rejection of claims 1 and 22-41 is affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a). See 37 C.F.R.
§ l.136(a)(l)(iv) (2011).
AFFIRMED
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