Ex Parte Stein et al

Patent Trial and Appeal Board

Dec 22, 2017

13668280 (P.T.A.B. Dec. 22, 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
ATTORNEY DOCKET NO. CONFIRMATION NO.
010109-11001A 2108
EXAMINER
ZEMAN, MARY K
ART UNIT PAPER NUMBER
1631
NOTIFICATION DATE DELIVERY MODE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/668,280 11/04/2012
58898 7590 12
Lempia Summerfield Katz LLC
20 South Clark
Suite 600
CHICAGO, IL 60603
Joshua Stein
12/27/2017 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):
docket-us @ lsk-iplaw.com
mail@lsk-iplaw.com
pair_lsk @ firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSHUA STEIN, MARIEL LAVIERI, MARK VAN OYEN,
JONATHAN HELM, DAVID MUSCH, and GREGG SCHELL
Appeal 2017-001324
Application 13/668,280
Technology Center 1600
Before JEFFREY N. FREDMAN, JOHN G. NEW, and TAWEN CHANG,
Administrative Patent Judges.
FREDMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134 involving claims to
computer-implemented method of modeling and forecasting progression of
glaucoma for a patient. The Examiner rejected the claims as directed to non-
statutory subject matter. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.
1 Appellants identify the Real Party in Interest as the Regents of the
University of Michigan {see App. Br. 2).
Appeal 2017-001324
Application 13/668,280
Statement of the Case
Background
“Patients suffering from glaucoma are monitored periodically via
quantitative tests to determine whether the disease is stable or a change in
treatment is warranted to slow glaucoma-related vision loss” (Spec. 14).
“However, because the disease progresses differently for different patients,
the ideal frequency of testing can vary from patient to patient, and no
consensus exists as to the optimal frequency by which testing should take
place” (id.) “The expense of conducting these tests can be significant for
both the patients and the overall healthcare system” (id. 1 5).
The Claims
Claims 1—14 and 25—31 are on appeal. Independent claim 1 is
representative and reads as follows:
1. A computer-implemented method of modeling and
forecasting progression of glaucoma for a patient, the method
comprising:
obtaining test history data for the patient for one or more
tests or measurements, the one or more tests or measurements
comprising an intraocular pressure measurement, a visual field
test, an optical coherence tomography measurement, a scanning
laser polarimetry measurement, a confocal scanning laser
ophthalmoscopy measurement, or any combination thereof;
customizing, by a processor, a multivariate state space
model for the patient based on the test history data for the
patient, the multivariate state space model comprising a model
state comprising one or more parameters representative of the
progression of glaucoma for the patient, at least one of the
parameters being associated with a respective distribution;
generating, by the processor using the customized
multivariate state space model, a forecast of the model state
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based on a current representation of the model state and current
measurement data for a test directed to observing progression of
glaucoma, the forecast of the model state being generated in
accordance with a plurality of recursive processors, the plurality
of recursive processors comprising a state transition processor
and a measurement processor; and
converting, by the processor, the model state forecast into
a disease progression probability or a future timing of the test
for the patient;
wherein generating the forecast of the model state
comprises:
recursively applying the state transition processor
to the one or more parameters of the model state to
generate the forecast of the model state;
recursively applying the measurement processor to
the one or more parameters of the model state to generate
an observation vector; and
calculating the forecast of the model state based on
a difference between the observation vector and the
current measurement data.
The Issue
The Examiner rejected claims 1—14 and 25—31 under 35 U.S.C. § 101
as being directed to non-statutory subject matter (Final Act. 2—6).
The Examiner finds all of the claims on appeal under 35 U.S.C. § 101
as being directed to patent-ineligible subject matter, specifically “the
abstract idea of forecasting a state or progression of glaucoma in a patient
utilizing state transition processors and recursive application of those
processors” (Final Act. 2). The Examiner finds the claim “steps of
‘customizing ... a multivariate space model,’ ‘generating ... a forecast of
the model state,’ and ‘converting ... the model state forecast into a disease
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progression probability or a future timing of the test for the patient’ are
abstract steps” {id. at 3).
The Examiner also finds the claims “include an additional judicial
exception, a natural phenomenon” because “the preamble of whether a . . .
test result can for[e]cast a naturally occurring disease process to a disease is
a natural phenomenon or naturally occurring correlation” (Final Act. 3).
The Examiner reached these conclusions by applying the test set out
in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S.
66 (2012) (Final Act. 2—6) based on the two-step Alice framework. Alice
Corp. Pty. Ltd. v. CLS Bank Inti, 134 S.Ct. 2347, 2355 (2014).
Appellants contend:
The customization of the model does not implement a
mathematical formula. The customization instead involves a
specific type of modification for which no mathematical
formula is identified or referenced by the present claims.
Similarly, no mathematical formula or algorithm is recited for
converting a forecast of a model state into a disease progression
probability or a future timing of a test. Lastly, the use of
recursive processors to generate the model state forecast does
not attempt to claim the recursive processors themselves, but
rather specify a particular application thereof as just one
element of a larger method. That is, the claimed invention is
not directed to a recursive processor. It follows that the present
claims are accordingly not directed to an abstract idea.
(App. Br. 5—6). Appellants also contend the “present claims are also not
directed to a natural phenomenon” {id. at 6). Appellants contend: “No
rationale has been provided to establish that forecasting glaucoma
progression by determining a disease progression probability or the timing
of a future test is directed to a natural phenomenon” {id. at 6). Appellants
further contend: “Determining the timing of a future test, for instance, is not
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a natural phenomenon, but instead involves the timing of an expressly
developed procedure” {id. at 6).
To determine whether a claim is invalid under § 101, we employ the
two-step Alice framework. In step one, we ask whether the claims are
directed to a patent ineligible concept, such as an abstract idea or law of
nature. Alice, 134 S.Ct. at 2355; Mayo, 566 U.S. at 75—77; Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1375 (Fed. Cir. 2015).
While method claims are generally eligible subject matter, method claims
that are directed only to abstract ideas and/or natural phenomena are directed
to a patent ineligible concept. Ariosa, 788 F.3d at 1376.
Alice Step One
Claim 1 of the instant application is directed to a multistep computer-
implemented method of modeling and forecasting progression of glaucoma
for a patient. That process is directed to both a law of nature and an abstract
idea. In particular, the law of nature/natural phenomenon is the relationship
between the risk of glaucoma progression and test history data. Cf. Mayo,
566 U.S. at 77 (“[L]aws of nature—namely, relationships between
concentrations of certain metabolites in the blood and the likelihood that a
dosage of a thiopurine drug will prove ineffective or cause harm.”). That the
relationship is obtained using computer processing of the test history data
does not change the fact that the relationship between glaucoma progression
and natural phenomenon such as intraocular pressure, visual field, or other
eye measurements “exists in principle apart from any human action.” Mayo,
566 U.S. at 77.
In addition, the recited steps of “obtaining test history data,”
“customizing, by a processor, a multivariate space model,” “generating, by
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the processor ... a forecast of the model state . . . with a plurality of
recursive processors,” and “converting, by the processor, the model state
forecast into a disease progression probability” all involve categorizing
and/or analyzing information. Our reviewing Court has explained that
“[information as such is an intangible” and “that collecting information,
including when limited to particular content (which does not change its
character as information),” analyzing it, and presenting the results of the
collection and analysis without more are patent ineligible abstract concepts.
See, e.g, Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1353—
54 (Fed. Cir. 2016).
We also are not persuaded by Appellants argument that the
“customization of the model does not implement a mathematical formula”
(App. Br. 5). The Specification teaches:
The model state 164, represented by at, may be as follows:
where VF refers to a global measure of performance from the
VF test. As shown in equation (1), the model state 164 includes
three derivatives of VF, which refer to the first three moments
of the VF measure with respect to time: velocity, acceleration,
and jerk. IOP represents the intraocular pressure measurement.
(Spec. 1 54).
The measurement processor 184 processes a measurement
equation, which indicates the system’s observation of the
disease state through medical testing. . . . The measurement
equation has the form
where s is a Gaussian random variable with E[s]=0 and
Var[s]=H. The observation zt is a Gaussian random variable
for all t.
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(Spec. 11 55, 57).
The recursive transition equation is given by
, = . Tv>: : >; ^; ; , W, A)
where rj is a Gaussian random vector with E[r|] = 0 and Var[r|]
=Q. The system state, at, is also a Gaussian random variable
for all t since it is the result of a linear combination of Gaussian
random variables.
(Spec. 156).
When a new observation is obtained, the error between the
predicted model state and the observation is used to calculate
the optimal new or updated state estimate. First, the
measurement residual, yt+l, and the predicted covariance
around the measurement, St+1, are calculated as
(Spec. 1 68).
The disclosure of the Specification substantially relies upon these
mathematical relationships to provide descriptive support for the claim steps
of “customizing, by a processor, a multivariate space model,” “generating,
by the processor ... a forecast of the model state . . . with a plurality of
recursive processors,” and “converting, by the processor, the model state
forecast into a disease progression probability.”
This case is similar to Digitech Image Technologies, LLC v.
Electronics for Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014).
There, the claims of the challenged patent were directed to the
abstract idea of organizing information through mathematical
correlations. Id. at 1350—51. ... A process that started with
data, added an algorithm, and ended with a new form of data
was directed to an abstract idea. Id.
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RecogniCorp LLC v. Nintendo Co., Ltd, 855 F.3d 1322, 1327 (Fed. Cir.
2017).
Because the claims are directed to an abstract idea/natural law, we
turn to the second step of the Alice framework.
Alice Step Two
In Alice step two, we examine the elements of the claims to determine
whether they contain an inventive concept sufficient to transform the
claimed naturally occurring phenomena into a patent-eligible application.
Mayo, 566 U.S. at 71—72 (quoting Alice, 134 S.Ct. at 2355). We must
consider the elements of the claims both individually and as an ordered
combination to determine whether additional elements transform the nature
of the claims into a patent-eligible concept. Ariosa, 788 F.3d at 1375.
The Specification acknowledges that the first claim step, “obtaining
test history data,” was known in the prior art, teaching the “standard for
glaucoma care is to periodically measure intraocular pressure (IOP) and
peripheral vision, as captured by visual field (VF) testing” (Spec. 1 5).
The Specification teaches, regarding the second claim step of
customizing the “state space model,” that the “model and the parameters
thereof, may be calibrated or trained in any number of ways. In one
embodiment, the model is calibrated using or via an expectation
maximization (EM) processor or algorithm. The processor, may, for
example, be implemented in Matlab” (Spec. 1 62). Thus, this step uses a
standard prior art processor and prior art software, Matlab, to perform the
mathematical operations involved in customizing the “state space model.”
The Specification teaches, regarding the generating a forecast step,
that “the model, such as the model 128, may include a linear Gaussian
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system that includes a Kalman filter. In these embodiments, the predicted
model state is generated by the Kalman filter” (Spec. | 64). Kalman filters
were first described in the early 1960’s and Appellants do not appear to
claim to have invented this algorithm.
Lastly, the Specification teaches, regarding the final converting step
that uses processors that “the processor 116 may be part of a standard
personal computer or a workstation or a piece of diagnostic equipment used
in a clinical setting” (Spec. 139).
The Examiner finds, and Appellants do not dispute with rebuttal
evidence, that: “Each test is a known test associated with glaucoma and /or
disease progression. Each test would be a well-understood, routine and
conventional test result required in a model for forecasting or tracking
glaucoma progression” (Ans. 6).
In sum, the evidence of record supports the Examiner’s position that
the claims do not add something “significantly more” to the abstract idea
and/or law of nature. Instead, each of the steps in the “claims (e.g.,
arranging, storing, retrieving, sorting, eliminating, determining) are
conventional, routine, and well-known. They involve the normal, basic
functions of a computer.” Versata Development Group, Inc. v. SAP
America, Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015). “In order for the
addition of a machine to impose a meaningful limit on the scope of a claim,
it must play a significant part in permitting the claimed method to be
performed, rather than function solely as an obvious mechanism for
permitting a solution to be achieved more quickly, i.e., through the
utilization of a computer for performing calculations.” SiRF Tech., Inc. v.
Inti Trade Comm’n, 601 F.3d 1319, 1333 (Fed.Cir. 2010).
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We conclude that the practice of the method claims does not result in
an inventive concept that transforms the abstract idea/natural phenomena of
modeling and forecasting progression of glaucoma for a patient into a
patentable invention. Mayo and Ariosa make clear that transforming claims
that are directed to a law of nature requires more than simply stating the law
of nature while adding the words “apply it.” Mayo, 566 U.S. at 72; Ariosa,
788 F.3d at 1377.
We find unpersuasive Appellants argument that:
Even if, for instance, multivariate state space models are, in
fact, well understood, routine, and conventional, the present
claims instead recite customizing a multivariate state space
model and, moreover, customizing the model in a specific way
— i.e., for a patient based on test history data for the patient.
The Office Action fails to address whether customizing a
multivariate state space model for a patient based on test history
data for the patient is well understood, routine, or conventional.
(App.Br. 7). In this argument, Appellants fail to identity any specific
disclosure within the Specification that is novel, much less unobvious. As
discussed above, the Specification itself supports the Examiner’s position
that the “computer systems utilized by the method claims are not a specific
or particular machine executing specific algorithms, but are generic
computer systems executing unspecified actions” (Ans. 6).
The addition of the mathematical formulae based on a natural
correlation of test measurements such as intraocular pressure and glaucoma
that change raw data levels into calculated data levels “simply changes the
data into other forms of data [that] cannot save [the claims].” Recognicorp,
855 F.3d at 1328. The claims, whether considered limitation-by-limitation
or as a whole, do not sufficiently transform the abstract idea/natural
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phenomena of modeling and forecasting progression of glaucoma for a
patient into a patentable invention.
We find unpersuasive Appellants argument that “no case law is
provided in support of the proposition that a limitation can be ignored during
the Part 2b analysis solely because it involves implementation on a general
purpose computer or other generic processor” (Reply Br. 4).
SmartGene explains the routine nature of claims such as those at issue
whose limitations simply call “on a computer to do nothing that is even
arguably an advance in physical implementations of routine mental
information-comparison and rule-application processes.” SmartGene, Inc. v.
Advanced Biological Laboratories, SA, 555 Fed. Appx. 950, 955 (Fed. Cir.
2014). As our reviewing Court in SmartGene noted under similar
circumstances, in such a context, “the concern about preempting public use
of certain kinds of knowledge, emphasized in Mayo, is a grave one.” Id.
We also find Appellants’ reliance on McRO unavailing. (Reply Br. 4).
The claims in McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d
1299 (Fed. Cir. 2016) were drawn to improvements in the operation of a
computer itself at a task, rather than applying a computer to perform known
tasks. See McRO, 837 F.3d at 1314. Therefore, McRO does not persuades
us that Appellants’ claims relying on correlations using known computer
components and known prior art mathematical algorithms as discussed
above are patentable subject matter.
We therefore conclude that Supreme Court and Federal Circuit
precedent constrains us to conclude that all of the claims on appeal are
directed to patent-ineligible subject matter.
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SUMMARY
In summary, we affirm the rejection of claims 1—14 and 25—31 under
35 U.S.C. § 101, as being directed to non-statutory subject matter.
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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