Ex Parte Schmidt et al

Patent Trial and Appeal Board

Feb 9, 2017

13417268 (P.T.A.B. Feb. 9, 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.
DEF-019 2041
EXAMINER
HUNTER, SEAN KRISTOPHER
ART UNIT PAPER NUMBER
3626
MAIL DATE DELIVERY MODE
13/417,268 03/11/2012
47713 7590 02/10/2017
IMPERIUM PATENT WORKS
P.O. BOX 607
Pleasanton, CA 94566
Guenter Schmidt
02/10/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GUENTER SCHMIDT, ARNO SCHAEPE,
THOMAS HEYDLER, MARKUS RINECKER, and GERD BINNIG
Appeal 2015-004360
Application 13/417,268
Technology Center 3600
Before HUBERT C. LORIN, BIBHU R. MOHANTY, and
BRADLEY B. BAYAT, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 of the non-
final rejection of claims 1—24. We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
Appeal 2015-004360
Application 13/417,268
THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
1. A method comprising:
[ 1 ] receiving a first electronic health record of a patient;
[2] determining a first clinical action that was applied on the
patient;
[3] generating a plurality of classifiers, wherein each of the
classifiers is associated with a clinical action that is to occur
after the first clinical action;
[4] classifying stored electronic health records of other
patients using the plurality of classifiers, wherein the
classifying generates a success value for the patient from each
electronic health record of another patient, and wherein the
stored electronic health records are stored in a database;
[5] displaying a portion of that electronic health record of
another patient that has the greatest success value; and
[6] indicating a second clinical action that is to be applied on
the patient, wherein the second clinical action is determined by
the classifier that generated the greatest success value, wherein
the indicating is performed by displaying a representation of the
second clinical action on a graphical user interface.
The Examiner relies upon the following as evidence of
unpatentability:
appeal.
THE REJECTIONS
Martin
Olson
US 2003/0154109 A1
US 7,447,643 B1
Aug. 14, 2003
Nov. 4, 2008
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The following rejections are before us for review:
1. Claims 1—24 stand rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
2. Claims 1—24 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Olson and Martin.
ISSUES
Did the Examiner err in rejecting claims 1—24 under 35 U.S.C. § 101
as being directed to non-statutory subject matter; and claims 1—24 under 35
U.S.C. § 103(a) as being unpatentable over Olson and Martin?
ANALYSIS
The rejection of claims 1—24 under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
The Appellants’ challenge to the rejection fails to show error in the
rejection.
The Examiner analyzed the claims in accordance with the two-step
framework for determining whether claimed subject matter is judicially-
excepted from patent eligibility under § 101 as articulated in Alice Corp.
Pty. Ltd. v. CLS Bank Inti, 134 S. Ct. 2347 (2014). Ans. 11.
In accordance therewith, the Examiner found that (1) the claims are
“directed to the abstract idea being a basic concept of providing healthcare”
(Ans. 11) and (2) the additional elements in the claims amount “to no more
than mere instructions to implement the idea on a computer, and/or the
recitation of generic computer structure that serves to perform generic
computer functions that are well-understood, routine, and conventional
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activities previously known to the pertinent industry” (Id.). From this, the
Examiner determined that the claimed subject matter runs afoul of 35 U.S.C.
§101.
The Appellants argue that “[t]he examiner has not provided a full
analysis as to why each claim is directed to no more than an abstract idea”
and that “claim 1 is not directed to the abstract idea of ‘providing
healthcare.’” Reply Br. 5—6.
We disagree. Although method claim 1 on its face is directed to the
“process” category of patent-eligible subject matter in Section 101, we
conclude that claim 1 is nonetheless nonstatutory because it is directed to
judicially-excepted ineligible subject matter.
Claim 1 recites six steps: (a) receiving; (b) determining; (c)
generating; (d) classifying; (e) displaying; and (f) indicating. Each of these
steps involve information. A first type of information is received and a
second type of information is determined. A third type of information is
generated and information is classified. Finally, information is displayed.
This is the essence of information gathering. Claim 1 as a whole is directed
to that: the concept of information gathering. Information gathering is a
fundamental building block of research, not to mention fundamental to
human behavior to, among many goals, attain knowledge. We naturally
constantly take in information and associate it with other information. The
abstract idea category of judicially-excepted subject matter broadly covers
building blocks of human ingenuity, like fundamental economic practices
(see Alice). Information gathering is such a building block and thus properly
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categorized as an abstract idea. Thus, we agree with the Examiner that claim
1 is directed to an abstract idea.
We find the Examiner properly and reasonably found that claim 1 is
directed to “providing healthcare” (Ans. 11) and that that is an abstract idea.
We have described it as “information gathering” (see above) but that is
simply a higher level of abstraction than the Examiner’s articulation of it.
Cf Apple, Inc. v. Ameranth, Inc., 2016 WL 6958650, *7 (Fed. Cir. 2016)
(“An abstract idea can generally be described at different levels of
abstraction. As the Board has done, the claimed abstract idea could be
described as generating menus on a computer, or generating a second menu
from a first menu and sending the second menu to another location. It could
be described in other ways, including, as indicated in the specification,
taking orders from restaurant customers on a computer.”).
Under the first step of the Alice framework, “[w]e must first determine
whether the claims at issue are directed to a patent-ineligible concept,” such
as an abstract idea. Alice, 134 S. Ct. at 2355. Appellants have not
adequately shown why claim 1 is not directed to an abstract idea. We note
that the Appellants have put forward no rebuttal evidence showing claim 1 is
not directed to an abstract idea irrespective of the level of abstraction at
which it may be described (e.g., “providing healthcare” or “information
gathering”). See also SmartGene, Inc. v. Advanced Biological Labs., SA,
555 F. App’x 950, 955 (Fed. Cir. 2014), cert, denied, 135 S. Ct. 58 (2014)
(“comparing new and stored information and using rules to identity medical
options” is an abstract idea.)
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The second step of the Alice framework is “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, 134 S. Ct. at 2355 (alteration in
original) (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132
S. Ct. 1289, 1294 (2012)). We have considered the elements of claim 1 both
individually and as an ordered combination, in light of the Appellants’
discussion, to determine whether the additional elements transform the
nature of the claim into a patent-eligible application. We are unpersuaded
that the Examiner erred in finding that they do not. See Ans. 11.
The Appellants argue that “claim 1 recites significantly more than the
conventional, well-understood activities associated with providing
healthcare.” Reply Br. 6 (citing DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245 (Fed. Cir. 2014)). According to the Appellants:
Generating a success value for a clinical action applied to a
particular patient based on analyzing the medical records of
other patients is a novel, inventive concent and therefore not
well-understood, routine or conventional. The examiner has
found no prior art references that teach either generating the
recited success value or the recited classifiers associated with
clinical actions. The method of generating the success values
and classifiers in claim 1 is an improvement in the field of
providing healthcare because the method allows physicians to
calculate the probability that a clinical action on a particular
patient will be successful based on the health records of other
patients.
Reply Br. 6.
We disagree.
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In Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct.
1289 (2012) the Court also addressed claimed improvements in the field of
providing healthcare, and specifically, processes that helped doctors
determine successful treatments for patients based on correlations. Id. at
1294. Similarly, Appellants’ claimed method identifies correlations between
patients based on stored electronic health records and indicates a clinical
action based on the correlation. Here, as in Mayo, the claimed “steps simply
tell doctors to gather data from which they may draw an inference in light of
the correlations.” Id. at 1298.
The Appellants’ argument that the Examiner “has found no prior art
references” does not apprise us of error in the rejection under 35 U.S.C.
§101. An abstract idea does not transform into an inventive concept just
because the prior art does not disclose or suggest it.
The Appellants’ claimed invention is readily distinguishable from the
claims in DDR. In DDR, the court addressed an invention that solved “a
challenge particular to the Internet” and found it patent-eligible because “the
claimed solution is necessarily rooted in computer technology in order to
overcome a problem specifically arising in the realm of computer networks.”
DDR, 773 F.3d at 1257. The court found that the claimed “computer
network” did not operate “in its normal, expected manner.” Id. at 1258.
Here, the claimed “database” and “graphical user interface” operate in
precisely the normal and expected manner, i.e., storing and displaying
information, respectively. There is insufficient evidence that the Appellants’
claim 1 roots the solution in computer technology. Rather, conventional
elements of a generic database and GUI are employed for their inherent
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functions to perform as expected. Here, as in Alice, the claims “do not, for
example, purport to improve the functioning of the computer itself or effect
an improvement in any other technology or technical field.” Alice, 134 S.
Ct. at 2351. In our view, the claims are not directed to overcoming a
technological problem.
We further note that claim 1 does not specify any particular entity that
performs the recited steps. For example, the claimed “determining,”
“generating,” and “classifying” steps are not linked to any device and thus
could be practiced mentally (e.g., by a doctor). Adding a mental step cannot
patentably transform an otherwise abstract idea into an inventive concept. In
re Comiskey, 554 F.3d 967, 979 (Fed. Cir. 2009) (“mental processes—or
processes of human thinking—standing alone are not patentable even if they
have practical application”). Claim 1 also does not specify any particular
device as providing the claimed “database” or “graphical user interface.”
Using “some unspecified, generic computer” is not “enough” to transform
the abstract idea into a patent-eligible invention. Alice, 134 S. Ct. at 2360
(citing Mayo).
The Appellants’ arguments regarding the other independent claims are
unpersuasive for similar reasons. Like claim 1, claims 11, 17, and 20 are
similarly nonstatutory because they are directed to the judicial exception of
abstract ideas. The Appellants have not separately argued the eligibility of
any of the dependent claims, which are similarly directed to various
information gathering schemes.
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We have fully considered the Appellants’ arguments. For the
foregoing reasons, they are unpersuasive as to error in the rejection. The
rejection is sustained.
The rejection of claims 1—24 under 35 U.S.C. § 103(a) as being
unpatentable over Olson and Martin.
Independent claim 1 includes the limitation: “[4] classifying stored
electronic health records of other patients using the plurality of classifiers,
wherein the classifying generates a success value for the patient from each
electronic health record of another patient” (App. Br. 24, Claims Appendix).
The Examiner finds this limitation in Olson at column 11, lines 1—5
and 14—29, and column 12, lines 4—15 (Ans. 3, 15). According to the
Examiner, “[t]he Examiner understands tracked cure and failure information,
clinical consequences of treatment, as well as the other information
contained and/or used in the databases as disclosed above to include ‘a
success value’, as recited by the Appellant in the language of independent
Claim 1” {id. at 15).
The Appellants argue, inter alia, that “Olson does not teach the
recited success value for a patient that is generated by classifying the health
records of other patients” (Appeal Br. 11). According to the Appellants,
“Olson does not teach that the failure information or the treatment
consequences information for a patient is generated by classifying the health
records of other patients” {Id.).
We agree with the Appellants that the cited passages of Olson do not
disclose the above limitation. Although Olson tracks cure (success) and
failure information for the patient, we see no disclosure in Olson of
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“classifying stored electronic health records of other patients'1'’ and
generating “a success value for the patient from each electronic health record
of another patient” as required by claim 1. Although we note that Olson
discloses storing “family histories” for the patient (column 11, lines 23—24),
we do not see any disclosure of classifying health records for members of
the patient’s family.
Independent claim 11 includes the limitation: “(b) identifying a group
of similar patients who are similar to the patient by performing a similarity
search in a database of electronic health records” (App. Br. 25, Claims
Appendix).
The Examiner finds this limitation in Olson at column 2, lines 46—50,
lines 54—58, column 7, lines 20-24, and column 9, lines 50-64 (Ans. 7—8,
16—17). According to the Examiner, “the analyzing as disclosed above
would include the identification of a group of similar patients who are
similar to the patient” (Ans. 17).
The Appellants dispute this finding (Appeal Br. 15—16). According to
the Appellants, “none of the cited passages teaches searching in health
records for the similarity between two patients.” Id. at 15.
We agree with the Appellants that the cited passages of Olson do not
disclose the above limitation. We fail to see any disclosure in the cited
passages of anything that reasonably resembles a “similarity search” that
identifies “a group of similar patients.”
The rejection of independent claims 17 and 20 is based on the same
deficient findings as claims 1 and 11. See Ans. 10 (“Claims 17—24 are
therefore rejected for the same reasons set forth above for claims 1—16”).
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A prima facie case of obviousness has not been made out in the first
instance by a preponderance of the evidence. Accordingly, the rejection is
not sustained.
CONCLUSIONS
The rejection of claims 1—24 under 35 U.S.C. § 101 as being directed
to non-statutory subject matter is sustained.
The rejection of claims 1—24 under 35 U.S.C. § 103(a) is not
sustained.
DECISION
The decision of the Examiner to reject claims 1—24 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).
AFFIRMED
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