Ex Parte Ryan et al

Patent Trials and Appeals Board

Jun 27, 2019

12091084 - (D) (P.T.A.B. Jun. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/091,084 04/22/2008 John C. Ryan
24737 7590 07/01/2019
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus A venue
Suite 340
Valhalla, NY 10595
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.
2005P01654WOUS 9303
EXAMINER
HOLCOMB, MARK
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
07/01/2019 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):
patti. demichele@Philips.com
marianne.fox@philips.com
katelyn.mulroy@philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte JOHN C. RYAN, DANIEL SIMMS, EGAMI TADASHI,
JEFFREY PERRY, NEAL GOLDBERG, GILBERT LEMKE,
BRIAN ZHOU, DAVID MOBERLY, and ROBERT LEICHNER 1
Appeal2017-010924
Application 12/091,084
Technology Center 3600
Before HUBERT C. LORIN, BIBHU R. MOHANTY, and
ROBERT L. KINDER, Administrative Patent Judges.
MOHANTY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134(a) of the final
rejection of claims 18, 33, 47--49, and 51 which are all the claims pending in
the application. We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF THE DECISION
We AFFIRM.
1 According to Appellants, the real party in interest is KONINKLIJKE
PHILIPS ELECTRONICS N V. (App. Br. 1 ).
Appeal2017-010924
Application 12/091,084
THE INVENTION
The Appellants' claimed invention is directed to a system to receive
and process patient information (Spec., page 2, lines 13-18). Claim 51,
reproduced below with the italics added, is representative of the subject
matter on appeal.
51. A patient information handing method using a patient
information system that includes a first station which sends and
receives information about a patient and is located in a
healthcare facility, a second station which sends and receives
patient information and is located in a dwelling of the patient, a
video display, a user interface which receives input patient
information, and a controller which controls the video display
and outputs information received by the user interfaces, and a
host center which connects the first station and the second
station, the method including:
with a care plan database at the host center, storing a
care plan tailored to the patient, the care plan including a
plurality of video sessions including educational, instructional,
and encouraging video messages and surveys,
with a server, periodically sending the video sessions of
the patient care plan to the controller,
with the controller, controlling the video display to
display the video messages and surveys sent from the care plan
database,
with the host center, analyzing survey answers input in
the user interface and, based on the analysis, algorithmically
selecting at least one of the educational, instructional, and
encouraging video messages and the surveys from the care plan
database and sending the selected video messages and surveys
to the video display,
with the host center, assessing progress and adherence of
the patient to the patient care plan and algorithmically
modifying the patient care plan based on the assessed progress
and adherence to the patient care plan,
with the host center, determining a level of risk and, in
response to determining a high level of risk, indicating an
urgent need for medical care, controlling a report generator to
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generate a report based on the survey answers and the patient
information and sending the report to the first station, and
wherein modifying the care plan includes at least one of
repeating one or more of the educational, instructional, and
encouraging video messages, re-ordering the educational,
instructional, and encouraging video messages, and adding one
or more additional educational, instructional, and encouraging
video messages.
THE REJECTIONS
The following rejections are before us for review:
1. Claims 18, 33, 47--49, and 51 are rejected under 35 U.S.C.
§ 101 as being directed to non-statutory subject matter.
2. Claims 18, 33, 47--49, and 51 are rejected under 35 U.S.C.
§ I03(a) as unpatentable over Brown (US 6,168,563 Bl; Jan. 2, 2001,
Rakshit et al. (US 5,799,282; Aug. 25, 1998) (hereinafter "Rakshit"), and
Chan et al. (US 2001/0039503 Al; Nov. 8, 2001) (hereinafter "Chan").
FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence2.
2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
( explaining the general evidentiary standard for proceedings before the
Patent Office).
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ANALYSIS
Rejection under 35 U.S.C. § 101
The Appellants argue that the rejection of claim 1 is improper because
the claim is not directed to an abstract idea (App. Br. 8-13; Reply Br. 2--4).
The Appellants argue that the claim is "significantly more" than the alleged
abstract idea (App. Br 13-19). The Appellants argue further that the claim is
not an abstract idea when considered as an "ordered combination" (Reply
Br. 4).
In contrast, the Examiner has determined that the rejection of record is
proper (Final Action 3-7; Ans. 16-27).
We agree with the Examiner. 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 ideas" are not patentable. E.g., Alice Corp. v. CLS
Bank Int'!, 573 U.S. 208,216 (2014).
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 .... ").
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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 (Gottschalkv. 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, 192
( 1981) ); "tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores" (id. at 182 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
mathematical formula." Diehr, 450 U.S. at 187; 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. (internal citation omitted) ( 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.").
The PTO recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
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Reg. 50 (Jan. 7, 2019) ("Guidance"). Under the Guidance, we first look to
whether the claim recites:
( 1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a}-(c), (e}-(h)).
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
is 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 Guidance.
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 ( 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. (alterations in original) (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.
Here, the Examiner has determined that the claim is directed to the
concept of
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a patient information handling method for analyzing input
survey answers and, based on the analysis, algorithmically
selecting a video and survey, assessing the patient's progress
and adherence to the care plan in order to algorithmically
modify the care plan, and determining a level of risk, wherein,
in response to determining a urgent medical care level of risk,
generating a report based on the survey answers and patient
information
(Ans. 17).
Here, the Examiner has determined that the claim collects
information, analyzes it, and displays certain results of the collection, and is
analogous to the abstract concept found in Electric Power (Ans. 18). The
Examiner has determined that the claim is directed to an abstract idea and
that the claim does not add "significantly more" to transform the abstract
nature of the claim (Ans. 17-19). We substantially agree with the Examiner
in this regard as claim 51 is directed to the steps we highlighted in italics in
the claim above. These steps are directed to the concept of giving a patient a
care plan and monitoring their progress and modifying the care plan as
needed which is a method of organizing human activities and an abstract
concept. See Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed.
Cir. 2016) ( collecting information, analyzing it, and displaying results from
certain results of the collection and analysis was held to be an abstract idea).
A system, like the claimed system of "a process that employs mathematical
algorithms to manipulate existing information to generate additional
information is not patent eligible." See Digitech Image Techs, LLC v. Elecs.
for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014). See In re Meyer,
688 F.2d 789, 795-96 (CCPA 1982), which held that "a mental process that
a neurologist should follow" when testing a patient for nervous system
malfunctions was not patentable.
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Thus, we consider the claim to be directed to an abstract idea as
identified above.
Turning to the second step of the Alice and Mayo framework, we
determine that the claim does not contain an inventive concept sufficient to
"transform" the abstract nature of the claim into a patent-eligible application.
The claims do not improve computer functionality, improve another field or
technology, utilize a particular machine, or effect a physical transformation.
Rather, we determine that nothing in the claims imposes a meaningful limit
on the judicial exception, such that the claims are more than a drafting effort
to monopolize the judicial exception.
For example, in claim 51 the steps of [ 1] "storing a care plan tailored
to the patient", [2] "periodically sending the video sessions of the patient
care plan to the controller", [3] "controlling the video display to display the
video messages and surveys sent from the care plan database", [ 4]
"analyzing survey answers input in the user interface", [5] "assessing
progress and adherence of the patient to the patient care plan", [ 6]
"determining a level of risk . . . controlling a report generator to generate a
report based on the survey answers and the patient information and sending
the report to the first station"; and [7] "repeating one or more of the
educational, instructional, and encouraging video messages, re-ordering the
educational, instructional, and encouraging video messages, and adding one
or more additional educational, instructional, and encouraging video
messages" are merely conventional steps performed by a generic computer
that do not improve computer functionality. That is, these recited steps [ 1 ]-
[7] "do not purport to improve the functioning of the computer itself' but are
merely generic functions performed by a conventional processor. Likewise,
these same steps [1]-[7] listed above do not improve the technology of the
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technical field and merely use generic computer components and functions
to perform the steps. Also, the recited method steps [ 1 ]-[7] above do not
require a "particular machine" and can be utilized with a general purpose
computer, and the steps performed are purely conventional. In this case, the
general purpose computer is merely an object on which the method operates
in a conventional manner and does not provide "significantly more" to the
claim beyond a nominal or insignificant execution of the method. Further,
the claim as a whole fails to effect any particular transformation of an article
to a different state in a manner that would render the claim "significantly
more" than the abstract idea. The recited steps [ 1 ]-[7] fail to provide
meaningful limitations to limit the judicial exception and rather are mere
instructions to apply the method to a generic computer. Considering the
elements of the claim both individually and as "an ordered combination" the
functions performed by the computer system at each step of the process are
purely conventional. Each step of the claimed method does no more than
require a generic computer to perform a generic computer function.
Further, the claim fails to add a specific limitation beyond the judicial
exception that is not well-understood, routine, and conventional in the field.
Rather the claim uses well-understood, routine, and conventional activities
previously known in the art at a high level of generality to the judicial
exception. The Specification at page 3, lines 25-29 for example describes
using conventional computer components such as hardware, software, and
protocols in a conventional manner within the purview of one of ordinary
skill in the art. The claim specifically includes recitations for a processor to
implement the method but these computer components are all used in a
manner that is well-understood, routine, and conventional in the field. The
Appellants have not shown these claimed generic computer components,
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which are used to implement the claimed method are not well understood,
routine, or conventional in the field. The Appellants have not demonstrated
that the claimed controller for instance is not a general purpose computer
component beyond those known to be routine and conventional known to
perform similar functions in a well-understood manner.
The Appellants in the Appeal Brief at page 8 have also cited to Enfzsh,
LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) to show that the
claim is not abstract but the claims in that case were not similar in scope to
those here and were in contrast directed to a self-referential data table.
The Appellants in the Appeal Brief at page 17 have also cited to
McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir.
2016) but the claims in that case are distinguished from this case in being
directed to rules for lip sync and facial expression animation.
For these reasons the rejection of claim 51 and its dependent claims,
which are not separately argued, is sustained.
We reach the same conclusion as to independent system claim 4 7 and
its dependent claims for which the Appellants have presented similar
arguments (App. Br. 10-13). Here, as in Alice, "the system claims are no
different in substance from the method claims. 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." Alice 134 S. Ct. at 2351. "[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." Id. at 2358 (quoting Mayo, 132 S.
Ct. at 1294).
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Rejection under 35 U.S.C. § 103(a)
The Appellants argue that the rejection of claim 51 is improper
because the prior art does not disclose or suggest the claim limitation for:
analyzing survey answers input in the user interface and based
on the analysis, algorithmically selecting at least one of the
educational, instructional, and encouraging video messages and
the surveys from the care plan database and sending the
selected video messages and surveys to the video display
(App. Br. 20, 21).
In contrast, the Examiner has determined that the claim limitation is
shown by Rakshit at Fig. 4 (Ans. 23-26).
We agree with the Appellants. Here, citation to Rakshit at Fig. 4 fails
to disclose for instance the claimed "analyzing claimed survey answers" or
selection of "video messages". For this reason, this rejection is not
sustained.
CONCLUSIONS OF LAW
We conclude that Appellants have not shown that the Examiner erred
in rejecting claims 18, 33, 47--49, and 51 are rejected under 35 U.S.C. § 101.
We conclude that Appellants have shown that the Examiner erred in
rejecting claims 18, 33, 47--49, and 51 are rejected under 35 U.S.C. § 103 as
listed in the Rejections section above.
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DECISION
The Examiner's rejection of claims 18, 33, 47--49, and 51 is
sustained.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a) (1) (IV). See
37 C.F.R. § 41.50(±).
AFFIRMED
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