Ex Parte Vendrell

Patent Trial and Appeal Board

Apr 30, 2018

13907167 (P.T.A.B. Apr. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/907, 167 05/31/2013
129565 7590 05/02/2018
Ferguson Braswell Fraser Kubasta PC
2500 Dallas Parkway, Suite 600
Plano, TX 75093
FIRST NAMED INVENTOR
Michael J. Vendrell
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.
8368-008 7388
EXAMINER
NG, JONATHAN K
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
05/02/2018 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):
eofficeaction@appcoll.com
patent@fbfk.law
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL J. VENDRELL
Appeal2016-004013
Application 13/907, 167 1
Technology Center 3600
Before JOSEPH A. FISCHETTI, PHILIP J. HOFFMANN, and
AMEE A. SHAH, Administrative Patent Judges.
FISCHETTI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's final rejection of claims 4--10 and 17-31. We have jurisdiction
under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
1 Appellant identifies Ikonopedia, Inc. as the real party in interest. App.
Br. 1.
Appeal 2016-004013
Application 13/907,167
THE INVENTION
Appellant claims "an image-based analysis [to] facilitate the
formation of an analysis and/or entry of an analysis by a user." Spec. i-f 5.
Claim 4 reproduced below, is representative of the subject matter on
appeal.
4. A method comprising:
generating a diagnostic graphical user interface using a module of a
computer, wherein the diagnostic graphical user interface is related to one or
more patient test results presented to a user via a third party interface, and
wherein the graphical user interface presents one or more image icons and
one or more anatomical locations concurrently, and wherein each image icon
includes at least a portion of a medical photographic image of an example
characteristic;
receiving one or more anatomical locations via the generated
graphical user interface, wherein a received anatomic location identifies at
least a portion of a patient presented in at least one of the patient test results;
receiving a selection of one or more of the image icons to associate
with at least one of the previously received anatomical locations, wherein
one or more of the image icons are related to diagnosing patients;
automatically generating a report comprising at least a portion of a
diagnosis for a patient based on at least one of the selected image icons; and
restricting selection of one or more of the image icons when at least
one anatomic location has not been received.
THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Kim
Bowers
Heilbrunn
US 2003/0212576 Al
US 2006/0236265 Al
US 2006/0277073 Al
2
Nov. 13, 2003
Oct. 19, 2006
Dec. 7, 2006
Appeal 2016-004013
Application 13/907,167
Collins
Kreeger
Giger
US 2006/0274928 Al
US 2011/0110576 Al
US 2012/0189176 Al
The following rejections are before us for review.
Dec. 7, 2006
May 12, 2011
July 26, 2012
Claims 4--10 and 17-31 are rejected under 35 U.S.C. § 101 because
the claimed invention is directed to non-statutory subject matter.
Claims 4, 7-10, 17-22, and 29-31 are rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Heilbrunn in view of Collins
and Bowers.
Claims 5 and 6 are rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Heilbrunn, Collins, and Bowers as applied to claim
4 above, and in further view of Official Notice.
Claims 23, 24, 26, and 28 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Heilbrunn in view of Collins and
Kreeger.
Claim 25 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Heilbrunn, Collins, and Kreeger as applied to claim 23
above, and in further view of Giger.
Claim 27 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Heilbrunn, Collins, and Kreeger as applied to claim 23
above, and in further view of Kim.
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FINDINGS OF FACT
1. We adopt the Examiner's findings as set forth on pages 2-30 of the
Final Action.
2. Figure 4 of Heilbrunn is shown below showing icon images
(annotated in square frames) and a location icon(s) (annotated encircled).
FIG.4
Figure 4 of Heilbrunn is shown above showing icon images
(annotated in square frames) and a location icon(s) (annotated encircled).
3. Figure 4 of Kreeger is shown below showing an icon based review
system.
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414
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Figure 4 of Kreeger is shown above showing an icon based review
system.
4. The Specification describes, "[ s ]election of one or more image
icons may be allowed (operation 330). When an anatomical location
selection is received, selection of image icon(s) may be allowed. For
example, selection of image icon( s) may be restricted prior to selecting an
anatomical location being selected." Specification i-f 78.
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35 U.S.C. § 103 REJECTION
ANALYSIS
The Appellant argued independent claims 4 and 17 as a group.
(Appeal Br. 7, 14--15). We select claim 4 as the representative claim for this
group, and the remaining independent claim standing or falling with claim 4.
See 37 C.F.R. § 41.37(c)(l)(iv) (2015).
Appellant argues,
The Examiner states that this feature of claim 4 is taught
since Bowers teaches display of an icon is altered to
make the icon unavailable for selection until a user has
made a selection elsewhere. The Examiner also asserts
that the motivation to combine the features would be
based on the motivation to prevent a user from selecting
a function of the system until the correct criteria has been
met. However, the motivation of generally prevention
[sic] a user from making a selection until a criteria has
been met is not the same as restricting selection of one or
more image icons when at least one anatomic location
has not been received, as taught by claim 4. In addition,
this motivation is not present anywhere in any of the
references nor is it related to any problems to be solved
by the references. Furthermore, the Heilbrunn and the
Collins references do not teach or suggest any criteria or
motivation to use a criteria that would motivate one
skilled in the art to incorporate the teachings of Bower
with anatomical locations or image icons to provide all
the features of claim 4 nor do the Heilbrunn or Collins
reference suggest a motivation for using restricted
selections in their described graphical user interfaces.
(Appeal Br. 9-10).
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Appellant also argues the Examiner failed to show the limitation,
"restricting selection of one or more image icons when at least one anatomic
location has not been received." (Appeal Br. 8).
The Examiner found concerning this limitation that
Bowers, however, teaches to graphical user interface
elements where icons and other data are displayed
concurrently to the user (para. 3). Bowers further teaches
to where display of the icon is altered to make the icon
unavailable for selection until a user has made a selection
elsewhere (Fig. 3)(para. 3). Bowers further teaches
greying the display of the icon to indicate that the icon is
unavailable for selection (para. 3). Bowers also teaches
to where the icon is indicated as being available by
rendering the icon in color (para. 3).
It would have been obvious to one of ordinary skill
in the art at the time of the invention to combine the
aforementioned features in Bowers with Heilbrunn and
Collins based on the motivation of preventing a user from
selecting a function of the system until the correct criteria
has been met (Bowers: para. 3).
(Final Act. 5---6).
To the extent Appellant seeks an explicit suggestion or motivation in
the reference itself, this is no longer the law in view of the Supreme Court's
recent holding in KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Since the Examiner has provided some articulated reasoning with some
rational underpinning for why a person with ordinary skill in the art would
modify Heilbrunn with the greying feature of Bowers to effect an
unavailable characteristic of an icon, i.e., "preventing a user from selecting a
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function of the system until the correct criteria has been met (Bowers: para.
3)" (Final Act. 5- 6), we find no error with the Examiner's reasoning here as
it is consistent with the description found in the Specification. (FF. 4).
Appellant's Specification does not specifically define the term "icon,"
nor does it utilize the term contrary to its customary meaning. The ordinary
and customary definition of the term icon is "a usually pictorial
representation: image."2 Thus, we use herein the terms "icon" and "image"
interchangeably.
As to Appellant's argument that, "[t]he Heilbrunn reference fails to
teach or even suggest restricting selection of one or more image icons when
at least one anatomic location has not been received" (App. Br. 9), we find
this argument unpersuasive because Appellant is attacking the Heilbrunn
reference individually when the rejection is based on a combination of
references. See In re Keller, 642 F.2d 413, 426 (CCPA 1981); In re Young,
403 F.2d 754, 757-58 (CCPA 1968). As found above, the Examiner relies
on Bowers, and not Heilbrunn, to show the limitation of "restricting
selection of one or more of the image icons when at least one anatomic
location has not been received." (Final Act. 5---6).
Appellant further argues, "the Examiner has failed to factually
support, as required by MPEP §2142, the conclusory statements in the
rejections based on Heilbrunn and thus fails to establish a prima facie case of
obviousness." (Appeal Br. 10).
2 https://www.merriam-webster.com/dictionary/icon (last visited 4/10/2018).
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We disagree with Appellant. All that is required of the office to meet
its prima facie burden is to set forth the statutory basis of the rejection and
the reference or references relied upon in a sufficiently articulate and
informative manner as to meet the notice requirement of§ 132. As the
statute itself instructs, the examiner must "notify the applicant," "stating the
reasons for such rejection," "together with such information and references
as may be useful in judging the propriety of continuing prosecution of his
application." 35 U.S.C. § 132; see also In re Jung, 637 F.3d 1356 (Fed. Cir.
2011). This, the Examiner has done here. See Final Act. 3-19.
Appellant further argues,
Figure 4 of Heilbrunn illustrates that the location
indicator 43a causes the embodiment to retrieve kidney
cross-section exemplary drawings 49b - 49f. (Heilbrunn,
paragraph 0068). However, image icons are not
presented concurrently with an anatomical location in
Figures 3 and 4 nor does paragraph 82 present a teaching
or motivation to present image icons and anatomical
locations concurrently. As specifically recited in claim 4,
"each image icon includes at least a portion of a medical
photographic image of an example characteristic."
(Appeal Br. 11-12).
The Examiner found,
Heilbrunn further teaches to where the system receives
an anatomical location where the user clicks on a specific
anatomical location on a graphical user interface (49a)
and displaying image icons ( 49b-49f) relating to the
specific anatomical location selected. The image icons
are not displayed to the user until the user has selected a
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specific anatomical location on the graphical user
interface (Fig. 4).
(Answer 21 ).
We agree with the Examiner. Our review of image icons 49b-f in
Figure 4 reveals that these icons offer the user selected cross sections 49b,
49c, 49d, and 49e offering a match to the condition the radiologist perceives
in the medical image. (Heilbrunn, i-f 81 ). This properly maps to the claimed
"wherein each image icon includes at least a portion of a medical image of
an example characteristic." That the image in Heilbrunn is drawn as
opposed to being a photograph, is not determinative of patentability because
Appellant does not present any evidence as to why a photograph versus a
drawing of an exemplary condition would be unobvious given that the
information would be the same except to form. Also, as shown in Figure 4,
the location indicator icon 43a is shown on the same screen with the image
icons 49b-f and, thus, each are presented concurrently as required by the
claims. (See FF. 2).
Each of independent claims 4, 17, 23, recites, in pertinent part, the
steps of, "receiving a selection of one or more of the image icons to
associate with at least one of the previously received anatomical locations,
wherein one or more of the image icons are related to diagnosing patients."
The Examiner found concerning this limitation, that it is disclosed by
Heilbrunn in Figures 4 and 6 at element 36a, stating:
Heilbrunn further teaches to where the system
receives an anatomical location where the user
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clicks on a specific anatomical location on a
graphical user interface (49a) and displaying image
icons ( 49b-49t) relating to the specific anatomical
location selected. The image icons are displayed to
the user concurrently with the specific anatomical
locations (Fig. 4) .... The user selects the image
icons to associate with the previously selected
anatomical location. The system in Heilbrunn
subsequently generates a report for the user where
the selected image icon is associated with the
selected anatomical location (see Fig. 6, 36a).
(Answer 23-24).
Appellant however, argues,
the Heilbrunn reference teaches "the invention
allows radiologists to formulate radiology reports
... by selecting drawings that represent
abnormalities accompanied by designatable
descriptive text." (Heilbrunn, paragraph 0037).
The Heilbrunn reference also teaches "once a
generic idealized normal representation ... is
retrieved ... the radiologist ... directs the invention
to suitably generate an altered drawing to show an
abnormality located on the otherwise normal or
idealized generic drawing." (Heilbrunn, paragraph
0038). Thus, the Heilbrunn reference teaches
selecting an abnormality and altering a generic
drawing to include the abnormality. (See also
Heilbrunn, Abstract stating "the abnormality is
placed at a location on the figure"). This is not the
same as receiving a selection of image icon( s ),
which are related to diagnosing the patient, to
associate with at least one previously received
anatomical location, as recited in claim 4. Instead,
the Heilbrunn reference teaches the opposite,
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selecting abnormalities and placing the
abnormality on a location on a figure.
(Appeal Br. 13-14).
We disagree with Appellant because as found above, Heilbrunn at
Figure 4 discloses image icon(s), which are offered as a selection of possible
image icons 49b-f associated with at least one anatomical location, e.g., at
location 49 in Figure 4. (FF. 2). Further, Heilbrunn's Figure 4 icons offer
the user selected cross sections 49b, 49c, 49d, and 49e to match the
condition the radiologist perceives in a medical image. (Heilbrunn, i-f 81 ).
We find no error in the fact that the content of these icons relate to an
abnormality because the claims only require that the image icons are for
"diagnosing patients," which is the use of the abnormality images.
Regarding independent claim 23, Appellant argues,
The Examiner equates an x-ray of a breast with a
breast image icon. Although the breast image icon
includes at least a portion of a photographic image
associated with breast density, a breast image icon
has functionality as recited in the claim. A breast
x-ray is merely a photograph without additional
functionality. Thus, the Examiner has applied a
claim terminology construction of a breast image
icon as recited in claim 23 that does not even
include the features recited in the claim (e.g., a
report is generated that includes at least a portion
of a diagnosis based at least partially on the
selection of a breast image icon).
(Appeal Br. 16).
The Examiner found,
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Kreeger teaches to computer-aided detection
findings using a graphical user interface (abstract).
Kreeger also teaches to displaying a first graphical
user interface where an image is displayed
comprising a photographic image associated with
breast density (Fig. 13) .... Kreeger also teaches to
where specific image icons are displayed on the
graphical user interface indicating lesions and
breast density (Fig. 8A- 420, 822, 824)(para. 68).
The image icons (Fig. 8A - 822, 824, 420) each
contain medical photographic images
representative of breast density.
(Answer 24--25).
We disagree with Appellant. First, we note that Appellant does not
challenge the combination of Heilbrunn in view of Collins and in further
view of Kreeger, but rather only asserts that Kreeger "fails to teach at least
one of the image icons that includes a breast density image icon, and
wherein each breast density image icon comprises at least a portion of a
photographic image associated with breast density." (Appeal Br. 16). With
that said, we find that Figure 13 of Kreeger discloses "an interactive user
interface display including a CAD validity warning and an alternative
modality recommendation triggered by an identification of a region of
excessive localized fibroglandular tissue density according to a preferred
embodiment." (Kreeger at i-f 32). Appellant's Specification does not
specifically define the term "icon", nor does it utilize the term contrary to its
customary meaning. The ordinary and customary definition of the term
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"icon" is "a usually pictorial representation: image."3 As such, we find that
the presentation of an image, such as shown in Figure 13 of Kreeger which
includes a tissue density warning, meets the claimed, "wherein at least one
of the image icons comprises a breast density image icon, and wherein each
breast density image icon comprises at least a portion of a photographic
image associated with breast density." According to Kreeger, this image is
produced through the intermediary of a film-screen mammogram
acquisition device 104 and a generalized "'other' medical imaging device
110." (Id. at i-f 38). Thus, we find that one of ordinary skill in the art would
understand that photographic versus CAD images are equivalent absent a
further explanation by Appellant as to why they are different in effect.
Appellant argues that the "breast x-ray [in Kreeger] is merely a
photograph without additional functionality." (Appeal Br. 16).
We disagree with Appellant because, for example, the image
displayed at outline 410 in Figure 4 of Kreeger (FF. 3) is an icon/image with
plural functionalities tied to that image, such as the slice slider 419 and the
region of interest tool 415. (Kreeger i-fi-150-51). We find unpersuasive
Appellant's argument that this functionality does not include "a report []
generated that includes at least a portion of a diagnosis based at least
partially on the selection of a breast image icon" (Appeal Br. 16), because
the Examiner relies on Collins (paragraphs 72 and 7 5), and not Kreeger, to
disclose generating a report based on annotated images. (Final Act. 5).
3 https://www.merriam-webster.com/dictionary/icon (last visited 4/10/2018).
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We also affirm the rejections of dependent claims 5-10, 18-22,
and 24--31 since Appellant has not challenged such with any reasonable
specificity (see In re Nielson, 816 F.2d 1567, 1572 (Fed. Cir. 1987)).
35 U.S.C. § 101 REJECTION
We will sustain the rejection of claims 4--10 and 17-31 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, we 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."
Alice Corp., Pty. Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2355 (2014) (citing
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72-73
(2012)).
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To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept.
Although the Court in Alice made a direct finding as to what the
claims were directed to, we find that this case's claims themselves and the
Specification provide enough information to inform one as to what they are
directed to.
The steps in representative claim 4 result in:
a received anatomic location identifies at least a portion
of a patient presented in at least one of the patient test
results;
receiving a selection of one or more of the image icons to
associate with at least one of the previously received
anatomical locations, wherein one or more of the image
icons are related to diagnosing patients;
automatically generating a report comprising at least a portion of a
diagnosis for a patient based on at least one of the selected image
icons; and
restricting selection of one or more of the image icons
when at least one anatomic location has not been
received.
The Specification states,
In some implementations, a selection of image icon( s)
may be received for a new patient, and a probability of an
outcome may be determined based on one or more of the
received selections of image icons for the new patient
and the previously determined outcomes. The graphical
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user interface may include association icon(s). At least
one of the association icons may indicate a relationship
between two or more selected image icons.
(Specification i-f 9).
The Specification describes,
(Id. i-f 12).
The report module may receive a selection of image
icon(s) to associate with at least one of the received
locations related to a diagnosis based at least partially on
the presented patient test results, and may automatically
generate a report that includes at least a portion of a
diagnosis for a patient based at least partially on the
selected image icon(s) and/or the template(s).
The Specification further states,
By allowing the user to select image icons, as opposed to
dictating and/or typing diagnoses, the user may more
quickly and/or accurately provide a diagnosis (e.g., since
the user may not have to repeatedly switch between right
and left brain activities; since the user may quickly select
icons rather than dictating an entire diagnosis; and/or
when viewing all the options available for selection on
the GUI, the user may be reminded to provide more
information such as comparison to previous exam when
seeing the icons on the GUI).
(Id. i-f 70). Thus, all this evidence shows that claim 4 is directed to an icon
driven diagnosis process for a patient, based on at least one selected image
icon(s). It follows from prior Supreme Court cases, and Gottschalk v.
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Benson, 409 U.S. 63 (1972) in particular, that the claims at issue here are
directed to an abstract idea. We also find the steps of;
receiving one or more anatomical locations via the generated
graphical user interface, wherein a received anatomic location
identifies at least a portion of a patient presented in at least one of the
patient test results;
receiving a selection of one or more of the image icons to associate
with at least one of the previously received anatomical locations,
wherein one or more of the image icons are related to diagnosing
patients;
automatically generating a report comprising at least a portion of a
diagnosis for a patient based on at least one of the selected image
icons,
constitute physical acts by a human and/or "analyzing information by steps
people go through in their minds, or by mathematical algorithms, without
more, as essentially mental processes within the abstract-idea category."
Electric 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 (Fed. Cir.
2014) (claims directed to certain arrangements involving contractual
relations are directed to abstract ideas). Thus, claims 4--10 and 17-31 are
drawn to an "abstract idea" beyond the scope of§ 101.
As in Alice Corp. Pty. Ltd., we need not labor to delimit the precise
contours of the "abstract ideas" category in this case. It is enough to
recognize that there is no meaningful distinction in the level of abstraction
between the concept of an intermediated settlement in Alice and the concept
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of an icon driven diagnosis process for a patient based on at least one
selected image icon(s), at issue here. Both are squarely within the realm of
"abstract ideas" as the Court has used that term. That the claims do not
preempt all forms of the abstraction or may be limited to patient based
assessments, does not make them any less abstract. See OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1360-61 (Fed. Cir. 2015).
The introduction of a computer into the claims does not alter the
analysis at Mayo step two.
the 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 "implement[ 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 feature[ e ]" that provides any "practical
assurance that the process is more than a drafting effort
designed to monopolize the [abstract idea] itself."
Alice Corp. Pty. Ltd., 134 S. Ct. at 2358 (alterations in original) (citations
omitted).
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"[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea ... on a
generic computer." Alice Corp. Pty. Ltd., 134 S. Ct. at 2359. 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 take in data, compute a result, and return the result to a user
amounts to electronic data query and retrieval-some of the most basic
functions of a computer. All of these computer functions are well-
understood, routine, conventional activities previously known to the
industry. In short, each step does no more than require a generic computer
to perform generic computer functions.
Considered as an ordered combination, the computer components of
Appellant's method add nothing that is not already present when the steps
are considered separately. Viewed as a whole, Appellant's claims simply
recite the concept of an icon driven diagnosis process for a patient, based on
at least one selected image icon(s). The claims do not, for example, purport
to improve the functioning of the computer itself. Nor do they effect an
improvement in any other technology or technical field. Instead, the claims
at issue amount to nothing significantly more than instructions to an icon
driven diagnosis process for a patient, based on at least one selected image
icon(s). Under our precedents, that is not enough to transform an abstract
idea into a patent-eligible invention. See Alice Corp. Pty. Ltd., 134 S. Ct.
at 2360.
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As to the structural claims, they
are no different from the method claims in substance.
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. This Court has long "warn[ ed]
. . . against" interpreting § 101 "in ways that make patent
eligibility 'depend simply on the draftsman's art.'
Alice Corp. Pty. Ltd., 134 S. Ct._at 2360 (alterations in original).
We have reviewed all the arguments (Appeal Br. 17-23) Appellant
has submitted concerning the patent eligibility of the claims before us which
stand rejected under 35 U.S.C. § 101. We find that our analysis above
substantially covers the substance of all the arguments which have been
made. But for purposes of completeness, we will address various arguments
in order to make individual rebuttals of the same.
Appellant argues,
The claims are not directed to merely generating
reports based on selections, but rather to image
icons and their use in creating reports that include
at least a portion of a diagnosis of a patient based
on selections of image icons. These image icons
include at least a portion of a photographic image
of an example characteristic.
(Appeal Br. 19-20).
We disagree with Appellant that the claims are patent eligible because
they recite implementation using image icons associated with computing
systems, because the claims do not recite any specific means constituting an
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Appeal 2016-004013
Application 13/907,167
improvement in the technical field or image technology in computing
systems. See McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299,
1314 (Fed. Cir. 2016). Significantly, the claims do not provide details as to
any non-conventional software for enhancing the financing process.
Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1342
(Fed. Cir. 2017) (explaining that "[o]ur law demands more" than claim
language that "provides only a result-oriented solution, with insufficient
detail for how a computer accomplishes it"); Elec. Power Grp., 830 F.3d at
1354 [Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir.
2016)]; (explaining that claims are directed to an abstract idea where they do
not recite "any particular assertedly inventive technology for performing
[conventional] functions").
CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 4--10 and
17-31under35 U.S.C. § 101.
We conclude the Examiner did not err in rejecting claims 4--10 and
17-31under35 U.S.C. § 103(a).
DECISION
The decision of the Examiner to reject claims 4--10 and 17-31 is
affirmed.
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Appeal 2016-004013
Application 13/907,167
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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