Ex Parte Saria et al

Patent Trials and Appeals Board

Jun 4, 2019

13786073 - (D) (P.T.A.B. Jun. 4, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
13/786,073
71897
KPPBLLP
7590
FILING DATE
03/05/2013
06/06/2019
2190 S. Towne Centre Place
Suite 300
Anaheim, CA 92806
FIRST NAMED INVENTOR
Suchi Saria
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.
S3 l-05009.PCT.CON 5550
EXAMINER
TOMASZEWSKI, MICHAEL
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
06/06/2019 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 SUCHI SARIA, ANAND KRISHNAKUMAR RAJAN!,
JEFFREY BENJAMIN GOULD, DAPHNE KOLLER, and
ANNA ASHER PENN
Appeal2017-005593 1
Application 13/786,073
Technology Center 3600
Before MURRIEL E. CRAWFORD, ANTON W. PETTING, and
CYNTHIA L. MURPHY, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner's
final rejection of claims 1--4 and 6--40. We have jurisdiction under 35
U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
1 Appellants identify The Board of Trustees of the Leland Stanford Junior
University as the real party in interest. Appeal Br. 3.
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Application 13/786,073
THE INVENTION
Appellants claim a system and methods for predicting morbidity in
medical patients. (Spec. ,r 2).
Claim 1 is representative of the subject matter on appeal.
1. A method for predicting morbidity of a premature infant
using at least two noninvasive physiological properties, the
method comprising:
accessing from a computer storage medium a gestational
age and a birth weight of the premature infant;
producing, by a monitoring device comprising a
noninvasive sensor, continuous time-series data including at
least one of heart rate, respiration rate and oxygen saturation of
the premature infant, and the monitoring device further
digitizing and recording sensor information;
accessing from a computer storage medium substantially
continuous time- series data for two noninvasive physiological
properties of the premature infant recorded by the monitoring
device during a monitoring period of between about one hour
and about ten hours, wherein the substantially continuous time-
series data is collected without human intervention during at
least one hour of the monitoring period;
computing a stable value and a characterization of
dynamics of the substantially continuous time-series data for at
least one of the two physiological properties;
determining, via execution of instructions on computer
hardware, a morbidity risk factor for: ( 1) the gestational age of
the premature infant, (2) the birth weight of the premature
infant, and (3) each of the stable values and the
characterizations of dynamics by comparing each of the stable
values and the characterizations of dynamics to a nonlinear
probability function;
weighting each of the morbidity risk factors using
weightings learned from an optimization procedure optimized
on a model group of premature infants;
aggregating each of the weighted morbidity risk factors
to generate a predictive indicator of morbidity of the premature
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infant; and outputting the predictive indicator to a front end
module;
wherein the predictive indicator of morbidity is
determined, via execution of instructions on computer
hardware, using a logistic function to aggregate the
morbidity risk factors.
THE REJECTION
Claims 1--4 and 6--40 are rejected under 35 U.S.C. § 101 as directed to
a judicial exception without significantly more.
ANALYSIS
35 U.S.C. § 101 REJECTION
We will sustain the rejection of claims 1-16, 18-19, and 22 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, ... 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."
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Alice Corp. Pty. Ltd. v. CLS Bankint'l, 573 U.S. at 208 (2014) (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72-73 (2012))
( citations omitted ( alterations in original)).
To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept. The Federal Circuit has
explained that "the 'directed to' inquiry applies a stage-one filter to claims,
considered in light of the [S]pecification, based on whether 'their character
as a whole is directed to excluded subject matter."' See Enfzsh, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet
Patents Corp., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). It asks whether the
focus of the claims is on a specific improvement in relevant technology or
on a process that itself qualifies as an "abstract idea" for which computers
are invoked merely as a tool. See id. at 1335-36.
In so doing we apply a "directed to" two prong test: 1) evaluate
whether the claim recites a judicial exception, and 2) if the claim recites a
judicial exception, evaluate whether the judicial exception is integrated into
a practical application. 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50-57 (Jan. 7, 2019) ("Guidance").
The Examiner determines that the claims are directed to a method for
predicting morbidity of a premature infant using at least two noninvasive
physiological properties. (Final Act. 2). The Examiner determines:
The abstract idea is identified as: processing healthcare
information. Processing healthcare information is an abstract
idea because it uses categories to organize, store, and transmit
information, etc.; includes data recognition and storage;
compares data to determine a risk level; collects and compares
known information; and/or obtains and compares intangible
data; uses mathematical relationships/formulas, etc."
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(Final Act. 2).
The Examiner determines that the invention is directed to processing
healthcare information by organizing information through mathematical
correlations and comparing new and stored information and using rules to
identify options. (Ans. 5). The Examiner finds that the method of claim 1
could be performed using pen and paper and/or in the human mind. (Ans.
8).
The Examiner finds the claims do not include additional elements
that are sufficient to amount to significantly more than the judicial exception
because the additional elements or combination of elements in the claims,
other than the abstract idea per se, amount to no more than a recitation of a
generic computer structure. The generic computer serves to perform generic
computer functions that merely link the abstract idea to a particular
technological environment and/or functions that are well-understood,
routine, and conventional activities previously known to the pertinent value.
(Final Act. 3). The Examiner points out that the Specification teaches that
the method is implemented via a desktop computer, a notebook computer, a
tablet computer, a handheld device, a monitoring device, a mobile telephone,
or other suitable device, which are all generic type computers. (Fin. Act. 3).
Appellants' Specification discloses that in a neonatal intensive care
unit ("NICU"), premature babies are typically continuously monitored for
their heart rate, respiration, and blood oxygen levels. (Spec. ,r 4). Time-
series physiological data is routinely and/or automatically recorded in many
intensive care units. Some existing morbidity scoring systems and other
medical scoring techniques have been employed that include human
observations, qualitative description, data collected using invasive
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measurements or techniques, data collected using human intervention or a
combinations thereof. (Spec. ,r 5). According to the Specification, what has
been missing in the previous morbidity scoring systems is the use of the
stable value ( average value or mean value) and the characterization
dynamics (variance) of such time-series physiological data. The use of the
stable value and the characterization dynamics produces a rapid and accurate
morbidity prediction. The stable value can be computed using an average or
mean of the time-series data or of a data set derived from time series data.
(Spec. ,r 11 ). The characterization of dynamics may be computed using one
or more measures of the variance of the time-series data or of a data set
derived from the time-series data. The stable value and characterization
dynamics are used to compute a morbidity risk factor of the premature infant
by comparing each of the stable values and the characterization of dynamics
to a nonlinear probability function. (Spec. ,r 13). Each morbidity factor is
weighted using weightings learned from an optimization procedure on a
model group of infants. Each weighted morbidity risk factor is aggregated
to generate a predictive indicator of morbidity of the premature infant and
this predictive indicator is outputted. (Spec. ,r 11 ). As such, the
Specification supports the Examiner's determination that the claims are
directed to processing healthcare information.
The recitations of claim 1, for example, also supports this
determination because claim 1 recites "accessing ... gestational age and
birth weight of the premature infant," "producing ... time-series data
including at least one of heart rate, respiration rate and oxygen saturation of
the premature infant," "accessing ... continuous time-series data ... during
a monitoring period" each of which involves collecting healthcare
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information. Claim 1 also recites "computing a stable value and
characterization of dynamics," "determining ... a morbidity risk factor,"
"weighting each of the morbidity risk factors," "aggregating each of the
weighted morbidity risk factors to generate a predictive indicator," and
"outputting the predictive indicator." These steps relate to the processing of
the healthcare information.
In view of the foregoing, we agree with the Examiner that claim 1 is
directed to processing healthcare information. We also agree that processing
healthcare information is a mental process that could be performed in the
human mind and/or with pen and paper.
In this regard, we find the steps of claim 1 constitute analyzing
information by steps people go through in their minds which without more,
are essentially mental processes within the abstract-idea category. See Elec.
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, 1355 (Fed. Cir. 2014)
( claims directed to certain arrangements involving contractual relations are
directed to abstract ideas).
In the alternative, claim 1 recites several mathematical calculations
such as "computing a stable value and a characterization of dynamics,"
"determining ... a morbidity risk factor ... by comparing each of the stable
values and the characterization of dynamics to a nonlinear probability
function," "weighting each morbidity risk factor," and determining a
predictive indicator "using a logistic function to aggregate the morbidity risk
factor."
Mental processes and mathematical calculations are both judicial
exceptions. Guidance 52.
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Turning to the second prong of the "directed to test," claim 1 requires
a "computer storage medium," and "computer hardware." The recitation of
the words "computer storage medium" and "computer hardware" does not
integrate the judicial exceptions into a practical application. Guidance at 55.
In this regard, the recitation does not affect an improvement in the
functioning of a computer storage medium, computer hardware or other
technology, does not recite a particular machine or manufacture that is
integral to the claims, and does not transform or reduce a particular article to
a different state or thing. Id. We note that the Specification discloses that
the method of the invention can be implemented with one or more physical
computer devices, one or more of which can have a processor, memory
storage, a network interface, other computing device components or a
combination of components. (Spec. ,r 54). As such, the Specification
indicates that generic computer storage medium and computer hardware are
used to implement the method of claim 1.
We agree with the Examiner that the monitoring device including a
noninvasive sensor is a well-known device, which is merely being using as a
tool to perform insignificant data gathering and therefore does not impose a
meaningful limit on the judicial exceptions. (Ans. 8). The prohibition
against patenting an abstract idea "cannot be circumvented by attempting to
limit the use of the formula to a particular technological environment or
adding insignificant post-solution activity." Bilski v. Kappos, 561 U.S. 593,
610--11 (2010) (intenial citation and quotation marks omitted). The Court in
Alice noted that "'[s]imply appending conventional steps, specified at a high
level of generality,"' was not 'enough ' [in Afayo] to transfonn an abstract
idea. Alice, 573 U.S. 208 (quoting Afayo, 566 U.S. at 82-83, 77-78, 72-73).
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There is no improvement to the monitoring device or sensor recited in the
claims. There is no transformation recited in claim 1. As such, the
recitation of a monitoring device does not integrate the judicial exceptions
into a practical application. Guidance 55.
Thus, claim 1 is directed to abstract ideas.
Turning to the second step of the Alice analysis, because we find that
the claims are directed to abstract ideas, the claims must include an
"inventive concept" in order to be patent-eligible, i.e., there must be an
element or combination of elements that is sufficient to ensure that the claim
in practice amounts to significantly more than the abstract idea itself. See
Alice, 573 U.S. at 217-218 (quoting Mayo 566 U.S. 66, 72-73 (2012)).
The introduction of a computer storage medium and computer
hardware into the claims does not alter the analysis at Alice 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 "implemen[ 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 223-224 (alterations in original) (citations omitted).
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Instead, "the relevant question is whether the claims here do more
than simply instruct the practitioner to implement the abstract idea ... on a
generic computer." Id. 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 to retrieve, select, and apply decision criteria to data and modify
the data as a result amounts to electronic data query and retrieval----one of
the most basic functions of a computer. All of these computer functions are
well-understood, routine, conventional activities previously known to the
trading industry. See Elec. Power Grp., 830 F.3d at 1354; see also In re
Katz Interactive Call Processing Patent Litig., 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"). In short,
each step does no more than require a generic computer to perform generic
computer functions. As to the data operated 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 Am. Inc. v. InvestPic, LLC, 890 F.3d 1016, 1022
(Fed. Cir. 2018).
Considered as an ordered combination, the computer components of
Appellants' claims add nothing that is not already present when the steps are
considered separately. The sequence of data reception-analysis-
access/display 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,
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allowing access, and receiving payment recited an abstraction), Inventor
Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir.
2017) (holding that sequence of data retrieval, analysis, modification,
generation, display, and transmission was abstract), Two-Way Media Ltd. v.
Comcast Cable Commc 'ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017)
(holding sequence of processing, routing, controlling, and monitoring was
abstract). The ordering of the steps is, therefore, ordinary and conventional.
The claims do not purport to improve the functioning of the computer
storage medium or computer hardware itself. As we stated above, the claims
do not affect an improvement to any other technology or technical field.
The Specification spells out different generic equipment and parameters that
might be applied using this concept and the particular steps such
conventional processing would entail based on the concept of information
access under different scenarios. The Specification also discloses that
monitoring devices, as the one recited in claim 1 are typical in NICUs.
(Spec. ,r 51 ). Thus, these limitations of claim 1 amount to nothing
significantly more than instructions to apply the abstract idea of processing
health care information using some unspecified, generic computer and
generic monitoring device. Under our precedents, that is not enough to
transform an abstract idea into a patent-eligible invention. See Alice, 573
U.S. at 222.
vVe have reviewed all the arguments (Appeal Br. 13----26; Reply Br. 3----
10) Appellants have submitted concerning the patent eligibility of the claims
before us that stand rejected under 35 U.S.C. § 101. \Ve find that our
analysis above substantially covers the substance of all the arguments, which
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have been made. But, for purposes of completeness, we will address various
arguments in order to make individual rebuttals of same . .._,
We are not persuaded of error on the part of the Examiner by
Appellants' argument that the claims have not been considered as a whole
when identifying the abstract idea (Appeal Br. 13). Specifically, Appellants
argue that the Examiner did not consider the recitations of a monitoring
device, determining a morbidity risk factor, weighting each morbidity risk
factors and determining a set of score parameters. We have discussed the
recitation of the monitoring device above. The other recitations relate to
computer processing of the healthcare information. In this regard, the steps
of determining a morbidity risk factor, weighting each morbidity risk factors
and determining a set of score parameters are steps of processing the
healthcare information that is collected by the monitoring device.
We are not persuaded of error on the part of the Examiner by
Appellants' argument that the claims are not analogous to abstract ideas
previously identified by the Courts. (Appeal Br. 16). We agree with the
Examiner's response to this argument found on pages 6-7 of the Answer
that the claims are similar to the claims in Digitech Image Techs., LLC v.
Elec.for Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014 and SmartGene, Inc.
v. Advanced Biological Labs., 555 F. App'x. 950 (Fed. Cir. 2014).
We are not persuaded of error on the part of the Examiner by
Appellants' argument that the claims are analogous to the claims of
BASCOM Global Internet Servs. v. AT&T Mobility LLC, 827 F.3d 1341
(Fed. Cir. 2016). (Appeal Br. 21). Appellants assert that, like the claims in
BASCOAf, the present clairns are directed to specific features for predicting
morbidity of a premature infant, specific features relating to a system for a
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probability for illness severity of a subject and specific features for creating
a scoring system for a probability for illness severity of a subject. (Appeal
Br. 22).
Contrary to Appellants' arguments, the Federal Circuit did not find
that the claims in BASCOl'vf recited an inventive concept because the claims
recited a specific implementation of the abstract idea of filtering content.
Rather, in BASCOlv1, the Federal Circuit followed the Supreme Court's
guidance for determining whether the claims recite an inventive concept set
forth in Alice, 573 U.S. at 221-225.
In Alice, the Supreme Court explained that, under the second step of
the patent-eligibility analysis, "the relevant question is whether the claims
here do more than simply instruct the practitioner to implement the abstract
idea of intermediated settlement on a generic computer." Alice, 573 U.S. at
221. The Supreme Court also provided examples of claims that represent
more than instructions to implement an abstract idea on a generic computer,
such as claims that purport to improve the functioning of the computer itself
and claims that effect an improvement in any other technology or technical
field. Id. at 224--226.
Turning to BASCOAf, the Federal Circuit held "[t]he inventive
concept described and claimed in the '606 patent is the installation of a
filtering tool at a specific location, remote from end-users, with
customizable filtering features specific to each end user." 827 F.3d at 1350.
In determining this feature to be an inventive concept, the Federal Circuit
explained that the remote location of a filtering tool having customizable
user-specific filtering features provides the filtering tool both the benefits of
a filter on a 1oca1 cornputer and the benefits of a filter on the ISP server and
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is a technical improvement over prior art ways of filtering content. Id. at
1350-51. Notably, the Federal Circuit specifically determined that "the
claims may be read to 'improve[] an existing technological process."' Id. at
1351 (citing Alice, 573 U.S. at 223).
As we discussed above, claim l does not recite an improvement to
any existing technology. Claim l does not recite an improvernent to the
computer storage medium, monitoring device and computer hard ware
recited in claim l .
In view of the foregoing, we will sustain the Examiner's rejection of
claim 1 under 35 U.S.C. § 101. vVe will also sustain the rejection as it is
directed to claims 2-4 and 6-33, because the Appellants have not argued the
separate eligibility of these clairns.
\Ve will also sustain the rejection as it is directed to dependent claims
34, 35, and 36 because these claims merely further define the calculations
recited in the independent claims from which they depend. In other words,
dependent claims 34, 35, and 36 may limit the scope of the abstract idea to
which their respective independent claims are directed but their character
remains unchanged, especially given that these dependent claims provide no
insight to improvements in cornputer functionality beyond what one would
expect from using a generic computer as a tool in perfonning the scheme as
claimed. None of these claims add anything significantly more to transform
the abstract idea.
CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting the appealed claims
under 35 U.S.C. § 101.
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DECISION
The decision of the Examiner is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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