Ex Parte Opfer et al

Patent Trial and Appeal Board

Aug 31, 2017

13517999 (P.T.A.B. Aug. 31, 2017)

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.
13/517,999 10/17/2012 Roland Opfer 2009P01765WOUS 5570
24737 7590 09/05/2017
PTTTT TPS TNTFT T FfTTTAT PROPFRTY fr STANDARDS
EXAMINER
465 Columbus Avenue WINSTON III, EDWARD B
Suite 340
Valhalla, NY 10595 ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
09/05/2017 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):
marianne. fox @ philips, com
debbie.henn @philips .com
patti. demichele @ Philips, com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROLAND OPFER, PAOLA KARINA TULIPANO,
ERIC COHEN-SOLAL, VICTOR PAULUS MARCELLUS VLOEMANS,
INGWER CURT CARLSEN, ALEXANDER VERBEEK,
ARVID RANDAL NICOLAAS, SEBASTIAN PETER MICHAEL DRIES,
and ROBBERT CHRISTIAAN VAN OMMERING
Appeal 2016-003025
Application 13/517,9991
Technology Center 3600
Before JEAN R. HOMERE, JASON V. MORGAN, and
AARON W. MOORE, Administrative Patent Judges.
MORGAN, Administrative Patent Judge.
DECISION ON APPEAL
Introduction
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final
Rejection of claims 18—37. Final Act. 2—19. Claims 1—17 are canceled.
App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify Koninklijke Philips Electronics N. V. as the real party
in interest. App. Br. 2
Appeal 2016-003025
Application 13/517,999
Invention
Appellants invented “a system ... for mapping a patient data structure
(PD) for describing a patient’s case into a guideline data structure (GD) for
describing a medical guideline.” Abstract.
Exemplary Claim
Claim 18, reproduced below with key limitations emphasized, is
18. A guideline-based clinical decision support system
comprising:
storage configured to store:
a plurality of data items associated with a patient;
a guideline graph that includes a plurality of action nodes
and a plurality of decision nodes, wherein each action
node includes one or more result items, and each decision
node is configured to process one or more of the result
items to select a branch of the guideline graph;
a linker configured to link the plurality of data items to the one
or more result items of the plurality of action nodes;
a pathway finder configured to determine a plurality of path
segments, based on the decision nodes and the data items that
have been linked to the result items of the action nodes;
a controller configured to enable the linker prior to enabling the
pathway finder, so that the pathway finder is provided a
complete linking of all of the plurality of data items to the one
or more result items of the action nodes;
a predictor configured to predict a subsequent action node for
advancing treatment of the patient based on the guideline graph
and at least one of the plurality of path segments, and
a display configured to display at least a portion of the at least
one of the plurality of path segments and the subsequent action
node;
wherein at least two of the path segments are not connected.
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Application 13/517,999
Rejections
The Examiner rejects claims 18—37 under 35 U.S.C. § 101 as being
directed to non-statutory subject matter. Final Act. 5—6.
The Examiner rejects claims 18—37 under 35 U.S.C. § 112(a) as
failing to comply with the written description requirement. Final Act. 2-4.
The Examiner rejects claims 18, 23—28, 30, 34, and 35 under 35
U.S.C. § 103(a) as being unpatentable over Ram et al. (US 8,275,631 B2;
issued Sept. 25, 2012) and Alsafadi (US 2008/0097791 Al; published Apr.
24,2008). Final Act. 6-13.
The Examiner rejects claims 19, 20, 31, 32, and 36 under 35 U.S.C.
§ 103(a) as being unpatentable over Ram, Alsafadi, and Benayon et al. (US
2008/0068382 Al; published Mar. 20, 2008). Final Act. 13—15.
The Examiner rejects claims 21, 22, 29, 33, and 37 under 35 U.S.C.
§ 103(a) as being unpatentable over Ram, Alsafadi, and Krishnan et al. (US
2007/0192143 Al; published Aug. 16,2007). Final Act. 15-19.
ANALYSIS
35 U.S.C. § 101
Patent eligibility is a question of law that is reviewable de novo.
Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012). To be
statutorily patentable, the subject matter of an invention must be a “new and
useful process, machine, manufacture, or composition of matter, or [a] new
and useful improvement thereof.” 35 U.S.C. § 101. There are implicit
exceptions to the categories of patentable subject matter identified in § 101,
including: (1) laws of nature, (2) natural phenomena, and (3) abstract ideas.
Alice Corp. Pty. Ltd. v. CLS Bank Inti, 134 S. Ct. 2347, 2355 (2014). The
Supreme Court has set forth a framework for distinguishing patents with
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claims directed to these implicit exceptions “from those that claim patent-
eligible applications of those concepts.” Id. (citing Mayo Collaborative
Servs. v. Prometheus Labs, Inc., 132 S. Ct. 1289 (2012)). The evaluation
follows a two-part analysis: (1) determine whether the claim is directed to a
patent-ineligible concept, e.g., an abstract idea; and (2) if a patent-ineligible
concept is present in the claim, determine whether any element, or
combination of elements, in the claim is sufficient to ensure that the claim
amounts to significantly more than the patent-ineligible concept itself. See
Alice, 134 S. Ct. at 2355.
The Examiner concludes that claim 18 is unpatentable under 35
U.S.C. § 101 because the claim is merely “directed to the abstract idea of
organizing human activity by mapping a patient data structure into a
guideline graph of a guideline data structure” and lacks “additional elements
that are sufficient to amount to significantly more than the judicial exception
because the generically recited computer elements do not add a meaningful
limitation to the abstract idea.” Final Act. 5—6.
Appellants contend the Examiner erred because in the claimed
invention, “«// of the patient data is mapped to the guideline before the
diagnostic process” and that “in all but the most trivial cases, it would be
virtually impossible, highly inefficient, and counter-intuitive for a human
diagnostician to map each piece of available patient information in a patient
data structure into a medical guideline data structure before proceeding
along the guideline.” Id. at 18—19; see also Reply Br. 11 (“[it] is infeasible
to assume that a medical practitioner could afford the time to manually ‘fill
in’ the blanks of an entire guideline graph to provide a complete linking of
all of the available patient data”).
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Appellants’ arguments are unpersuasive. First, the claims are not
limited to non-trivial embodiments where the amount of patient data renders
it infeasible for a medical practitioner to perform analogous steps (for
example, with pen and paper). Second, the inability of a human practitioner
to perform all the steps does not alone confer patentability because “the fact
that the required calculations could be performed more efficiently via a
computer does not materially alter the patent eligibility of the claimed
subject matter.” FairWarningIP, LLC v. Iatric Sys., Inc., 839 F.3d 1089,
1098 (Fed. Cir. 2016), quoting Bancorp Services L.L.C. v. Sun Life
Assurance Co. of Canada, 687 F.3d 1266, 1278 (Fed. Cir. 2012). Thus,
even if the claims did exclude trivial cases, the claimed invention would still
be directed to the abstract idea of organizing human activity by mapping a
patient data structure into a guideline graph of a guideline data structure.
Appellants further contend the Examiner erred because the claimed
“use of ‘data structures’ and ‘mapping’ are rooted in computer technology to
provide a unique solution to the problem of implementing a personalized
medical guideline that is based on all of the available data.” App. Br. 18;
see also id. at 20 (“the limitation of linking all of the patient data to nodes of
a clinical guideline before attempting to define a path ... is neither routine
nor conventional in the field of medical diagnostics, and provides
advantages that were not recognized”); Reply Br. 8 (“creation of an activity
graph, and the execution of the activity graph are not routine operations
performed by a computer”). Appellants argue the claimed invention
provides something significantly more than the underlying abstract idea
because:
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[the] invention significantly improves the technical field of
computer-assisted medical diagnostics by providing the
aforementioned ‘look ahead’ capability for identifying actions
that are likely to link to existing path segments that are defined
by the a priori linking of all patient data to result items of action
nodes in a clinical guideline. This is likely to result in the
identification of tests that are more likely to result in a proper
and efficient diagnosis of the patient’s condition.
App. Br. 20; see also Reply Br. 9 (“[djeciding to ‘skip’ a step is not an
inherent capability of a conventional computer device”).
Appellants’ arguments unpersuasively fail to show that the claimed
elements are more than mere generic computer elements that “do not add
meaningful limitations to the idea of comparing new and stored information
and using rules to identify options beyond generally linking the system to a
particular technological environment.” Ans. 6. Appellants contend that “the
path finding process attempts to connect path segments that are not yet
connected using heuristics .... likely to lead to a correct diagnosis.” Reply
Br. 11. However, Appellants do not identify recitations directed to such
heuristics. At best, claim 18 recites “a predictor configured to predict a
subsequent action node for advancing treatment of the patient.” However,
claim 18 recites this predictor without limiting the prediction capabilities to
any set of heuristics. Rather, the claim is broad enough to encompass, for
example, a predictor that makes its prediction by simply prompting a human
operator to input a prediction, thus merely using generic computer elements
to elicit the results of human intuition and expertise (abstract concepts)
rather than limiting the claimed invention with something significantly more
than the underlying abstract concept.
For these reasons, we agree with the Examiner that claim 18 is
directed to non-statutory subject matter. Accordingly, we sustain the
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Examiner’s 35 U.S.C. § 101 rejection of claim 18, and claims 19—37, which
Appellants do not argue separately.
35 U.S.C. § 112(a)
In rejecting claim 18, and dependent claims 25 and 26, under 35
U.S.C. § 112(a), the Examiner finds that the Specification fails to reasonably
convey to an artisan of ordinary skill that Appellants had possession of
recitations directed to “a controller configured to enable the linker prior to
enabling the pathway finder”; “a display configured to display at least a
portion of the at least one of the plurality of path segments and the
subsequent action node”; “where the subsequent action node is an end node
in the at least one of the plurality of path segments”; and “wherein the
subsequent action node connects two of the at least two path segments that
are not connected.” Final Act. 2—\\ see also Ans. 4 (“as previously rejected
and maintained, the Examiner did not see support in [the] Specification” for
the disputed recitations).
Appellants cite to persuasive evidence showing error in the
Examiner’s findings. See App. Br. 8—10 (citing Spec. p. 6,11. 17, 23—35, p.
11.11. 1—7, 15—27, andp. 13,11. 8—20, 22—30). Appellants’ contentions
accord with the cited portions of the Specification. In particular, Appellants
show the Specification discloses a method that “begins with linking S10 data
items” (i.e., a controller configured to enable the linker . . .), “[a]fter said
linking S10, the method M continues to computing S30 a degree of
completeness,” and “[a]fter said computing S30, the method M continues to
finding S40 a pathway PW” (. . . prior to enabling a pathway finder). Spec.
13.11. 14—20, cited in App. Br. 8. Appellants show the Specification
discloses “displaying S20 at least part of the guideline graph GG” (i.e., a
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display configured to display at least a portion of the at least one of the
plurality of path segments and the subsequent action node). Spec. 13,1. 23,
cited in App. Br. 8. Appellants show the Specification discloses a “new
action node may be a node extending the pathway beyond the last action
node of the pathway” such that the new action node is an end node. Spec.
11,11. 22—23, cited in App. Br. 9. And Appellants show the Specification
discloses a new action mode “may be a missing action node for joining two
segments of the pathway,” thus connecting two path segments that were not
connected. Spec. 11,11. 23—24, cited in App. Br. 10.
Moreover, the Examiner does not proffer contrary findings or
explanation with respect to Appellants’ arguments and cited evidence.
Therefore, we agree with Appellants that the Specification reasonably
conveys to an artisan of ordinary skill that Appellants had possession of the
disputed recitations.
Accordingly, we do not sustain the Examiner’s 35 U.S.C. § 112(a)
rejection of claims 18—37.
35 U.S.C. § 103(a)
In rejecting claim 18 under 35 U.S.C. § 103(a), the Examiner finds
that Ram’s processing of alternatives in an activity graph renders obvious
the pathway finder that is provided a complete linking of all of the plurality
of data items to the one or more result items of the action nodes. Final Act.
8 (citing Ram col. 10,11. 46-49). In particular, the Examiner finds that
“[djuring execution of an activity graph, the execution engine 100 may
process all alternatives for which criteria are met, thereby allowing
concurrent execution of multiple paths.” Ans. 3 (citing Ram col. 10,11. 65—
67, col. 11,11. 1-5).
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Appellants contend the Examiner erred because Ram’s “execution of
the guideline involves tracking the guideline from node to node and
obtaining the data required to progress from each node to a next node(s)
[sic].” App. Br. 12. Appellants argue that “Ram requests and receives the
patient data while the guideline is being executed, thereby creating a
continuously joined path.” Id. at 13 (emphasis added). “Data that may be
used by a node further along a potential path is not requested or received
until that node is to be executed by the execution engine.” Id. (emphasis
added). Appellants emphasize that “Ram obtains the patient data while
executing the activity graph” and merely “processes alternatives for which
criteria are met.'” Reply Br. 3. Thus, Appellants argue “[w]hen data is not
available, Ram’s execution of (continuation along) that path is blocked until
the data is provided.” Id.
We find Appellants’ arguments persuasive. Claim 18 recites “that the
pathway finder is provided a complete linking of all of the plurality of data
items to the one or more result items of the action nodes” (emphasis added).
However, the cited disclosures of Ram are limited to processing of
“alternatives for which criteria are met.” Ans. 3 (citing, e.g., Ram col. 11,11.
1—5). This feature of Ram accords with Appellants’ arguments that Ram’s
execution engine 100, while able to process alternatives during execution,
only receives some, but not all of the data items (i.e., those for which criteria
are met), rather than a complete linking of all of the plurality of data items.
The Examiner’s findings do not show that it would have been obvious
to an artisan of ordinary skill to modify Ram’s execution engine 100 to
receive a complete linking, in the manner claimed, or that some of Ram’s
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activity graphs (having decision nodes representing clinical decision logic)
would be populated exclusively with alternatives for which criteria are met.
The Examiner’s findings also do not show that Alsafadi, Benayon, or
Krishnan cure the noted deficiency of Ram. Therefore, we do not sustain the
Examiner’s 35 U.S.C. § 103(a) rejections of claim 18, and claims 19-37,
which contain the same or similar recitations.
DECISION
We affirm the Examiner’s decision rejecting claims 18—37 under 35
U.S.C. § 101.
We reverse the Examiner’s decision rejecting claims 18—37 under 35
U.S.C. §§ 112(a) and 103(a).
Because we sustain at least one rejection of each of pending claims,
we sustain the Examiner’s decision rejecting claims 18—37.
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.
§ 41.50(f).
AFFIRMED
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