Ex Parte Wang et al

Patent Trial and Appeal Board

May 25, 2018

13563575 (P.T.A.B. May. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
13/563,575
146568 7590
Entit Software LLC
500 Westover Drive
#12603
Sanford, NC 27330
FILING DATE FIRST NAMED INVENTOR
07/31/2012 Haiyan Wang
05/30/2018
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.
82961693 6923
EXAMINER
TIEDEMAN, JASON S
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
05/30/2018 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):
software.ip.mail@microfocus.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HAIY AN WANG, CIPRIANO A. SANTOS, ENIS KA YIS,
SHAILENDRA K. JAIN, SHARAD SINGHAL, and
MARIA TERESA GONZALEZ DIAZ
Appeal2016-006323 1
Application 13/563,5752
Technology Center 3600
Before BRADLEY W. BAUMEISTER, KAL YANK. DESHPANDE, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
FINAMORE, Administrative Patent Judge.
DECISION ON APPEAL
1 Our Decision references Appellants' Specification ("Spec.," filed July 31,
2012), Appeal Brief ("Appeal Br.," filed Dec. 7, 2015), and Reply Brief
("Reply Br.," filed June 7, 2016), as well as the Examiner's Final Office
Action ("Final Act.," mailed July 7, 2015) and Answer ("Ans.," mailed
Apr. 7, 2016).
2 Appellants identify Hewlett Packard Enterprise Development LP, a
wholly-owned affiliate of Hewlett Packard Enterprise, as the real party in
interest. Appeal Br. 1.
Appeal2016-006323
Application 13/563,575
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellants appeal from the
Examiner's decision to reject claims 1--4, 6, 7, 10-14, and 17-21. We have
jurisdiction under § 6(b ).
We AFFIRM.
SUBJECT MATTER ON APPEAL
The invention relates to optimized surgery scheduling. Spec., Title.
Claims 1, 10, and 18 are the independent claims on appeal. Independent
claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A method comprising:
receiving, at a scheduling system that executes on a
processor, a plurality of surgery scheduling requests for surgical
procedures to be performed on a plurality of patients at a surgical
facility having a plurality of operating rooms;
identifying, using the scheduling system, resource
constraints associated with the scheduling requests;
identifying, using the scheduling system, an optimization
goal for the surgical facility, optimization goal being defined
using weighted optimization parameters;
applying, using the scheduling system, an optimization
model to the resource constraints and the optimization goal to
generate a proposed surgery schedule for the surgical facility
includes sequencing and operating room assignments for each of
the surgical procedures performed on the plurality of patients;
simulating the proposed surgery schedule to determine
expected operational metrics associated with the proposed
surgery schedule;
in response to feedback from a user, adding inequality
constraints to the optimization model to exclude the proposed
surgery schedule; and
reapplying the optimization model to the resource
constraints and the optimization generate a new proposed surgery
schedule that accounts for the inequality constraints;
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Application 13/563,575
scheduling the surgical procedures to be performed on the
patients at the surgical having the operating rooms according to
the new proposed surgery schedule,
wherein applying the optimization model to the resource
constraints and the optimization goal to generate the proposed
surgery schedule comprises:
defining a plurality of decision variables associated
with the resource constraints;
defining an objective function for the optimization
model, the objective associated with the optimization goal
and being a function of the decision variables; and
using the objective function to generate the
proposed surgery schedule,
wherein the proposed surgery schedule is optimized based on
estimates of surgery durations for the surgical procedures to be
performed on the plurality of patients.
REJECTION
The Examiner rejects claims 1--4, 6, 7, 10-14, and 17-21 under
35 U.S.C. § 101 as non-statutory subject matter.
ANALYSIS
Appellants argue claims 1--4, 6, 7, 10-14, and 17-21 as a group.
Appeal Br. 5-11; Reply Br. 1--4. \Ve select independent claim 1 as
representative. The remaining claims of the group stand or fall with
independent claim 1. 37 C.F.R. § 4I.37(c)(l)(iv).
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101. The
Supreme Court, however, has long interpreted § 101 to include implicit
exceptions: "[l]aws of nature, natural phenomena, and abstract ideas" are not
patentable. See, e.g., Alice Corp. Pty. Ltd. v. CLS Banklnt'l, 134 S. Ct.
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2347, 2354 (2014) (quoting Ass 'nfor Molecular Pathology v. Myriad
Genetics, Inc., 133 S. Ct. 2107, 2116 (2013)). To "distinguish[] patents that
claim laws of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts," the Supreme Court, in
Alice, reiterated the two-step framework previously set forth in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289
(2012), which, in the first step, considers whether a claim is directed to a
patent-ineligible concept, e.g., an abstract idea, and, if so, considers, in the
second step, whether the claim recites an inventive concept-an element or
combination of elements sufficient to ensure the claim amounts to
significantly more than the abstract idea and transform the nature of the
claim into a patent-eligible application. Alice, 134 S. Ct. at 2355 (citing
Mayo, 132 S. Ct. at 1294, 1296-98).
In rejecting independent claim 1 under 35 U.S.C. § 101 as
non-statutory subject matter, i.e., subject matter judicially excepted from
statutory subject matter, the Examiner analyzes the claim using this two-step
framework. Final Act. 2-3. Pursuant to the first step, the Examiner
determines the claim is directed to the abstract idea of "optimizing an
operating room schedule based on a number of routine factors to create a
mathematical model." Id. at 3. According to the Examiner, "optimizing an
operating room schedule based on a number of routine factors to create a
mathematical model" is an abstract idea because it is method of organizing
human activity and similar to other concepts the courts have held to be
abstract ideas, such as using categories to organize, store, and transmit
information and comparing new and stored information using rules to
identify options. Id. Under the second step, the Examiner determines the
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Application 13/563,575
claim does not recite significantly more than the abstract idea because
receiving and outputting data would be routine in any computer
implementation and constitute extra-solution activity. Id.
At the outset, we are unpersuaded of error by Appellants' argument
that independent claim 1 does not preempt others from using the abstract
idea of operating room schedule optimization. Appeal Br. 9; Reply Br. 4.
Although preemption may be the basis for excluding abstract ideas from
eligible subject matter, preemption is not the test for patent eligibility.
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379
(Fed. Cir. 2015) ("The Supreme Court has made clear that the principle of
preemption is the basis for the judicial exceptions to patentability. For this
reason, questions on preemption are inherent in and resolved by the § 101
analysis." ( citation omitted)).
Appellants also contend the Examiner erred in concluding that
independent claim 1 does not recite significantly more that the abstract idea
under the second step of the analysis. Appeal Br. 6; Reply Br. 3. More
specifically, Appellants assert that, as a prima facie matter, the Examiner has
failed to explain how defining decision variables associated with resource
constraints, defining an objective function for an optimization model that is
associated with an optimization goal and that is a function of the decision
variables, and using the objective function to generate a proposed surgery
schedule constitute well-understood, routine, and conventional activities.
Appeal Br. 6-8; Reply Br. 3--4. Appellants further assert the Examiner
makes an untenable contradiction in that the Examiner admits the claimed
invention is novel and nonobvious, but determines the claim amounts to
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Application 13/563,575
nothing more than that which is well-understood, routine, and conventional.
Appeal Br. 8. Appellants, however, do not apprise us of Examiner error.
"It is true that 'the§ 101 patent-eligibility inquiry and, say, the§ 102
novelty inquiry might sometimes overlap.' But a claim for a nevv abstract
idea is still an abstract idea.'' /·}ynopsys, Inc v. lvientor Graphics Cmp., 839
F.3d 1138, 1151 (Fed. Cir. 2016) (citation omitted) (quotingAfa_yo,
132 S. Ct. at 1304), T'he question in the second step of the patent-eligibility
analysis is not whether a claim limitation is noveL but rather whether the
implementation of the abstract idea involves "more than perfrnmance of
'well-understood, routine, [and] conventional activities previously knovvn to
the industry.rn Content Extraction & Transmission LLC v. Wells Fargo
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Here, the claim limitations describing the decision variables
associated with resource constraints, the objective function for an
optimization model being associated with an optimization goal and a
function of the decision variables, and the use of the objective function to
generate a proposed surgery schedule go to the abstract idea of optimizing
an operating room schedule. Given that these limitations describe the
abstract idea, the Examiner need not explain bow the limitations constitute
well-understood, routine, and conventional activities. Rather, the Examiner
determines that the computer implementation of these steps requires nothing
more than computer functions that are well-understood, routine, and
conventional, such as receiving and processing data. Ans. 5.
Even if the claim recites novel and nonobvious steps to optimize an
operating room schedule, the computer implementation of the claimed steps
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requires only computer functions that are well-understood, routine, and
conventional. As such, the implementation is insufficient to transform the
claim into a patent-eligible application.
Appellants additionally argue that independent claim 1 recites
significantly more than the abstract idea because it effects a transformation,
namely the transformation of a patient to a different state by virtue of their
surgeries being scheduled according to the claimed invention.
Appeal Br. 10-11; Reply Br. 1-3. According to Appellants:
The present claims are no different than those in [ Diamond v.
Diehr, IOI S. Ct. 1048 (1981)]. The recitation of various
collection, manipulation, and organization of data to generate a
surgical schedule of surgical procedures results in the physical
transformation of human patients, no different than the recitation
of various collection, manipulation, and organization of data in
Diehr results in the physical transformation of rubber.
Reply Br. 2.
Appellants' argument is not persuasive because it is not
commensurate with the scope of the claim. Independent claim 1 is not
directed to a surgery including the scheduling method. Rather, the claim
recites simply the method for scheduling.
Consequently, we see no parallel between independent claim 1 and
the claims in Diehr. In Diehr, each claim recites a technological process
effecting a transformation. Namely, the claims in Diehr recite a "method of
operating a rubber-molding press for precision molded compounds" and a
"method of manufacturing precision molded articles from selected synthetic
rubber compounds in an openable rubber molding press having at least one
heated precision mold." Diehr, IOI S. Ct. at 1053 n.5. In contrast, as set
forth above, independent claim 1 of the present appeal recites a scheduling
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method, not a surgery on a patient, and, thus, does not claim the alleged
technological process effecting a transformation.
In view of the foregoing, Appellants do not apprise us of error in the
Examiner's determination that the subject matter of independent claim 1 is
patent ineligible, i.e., judicially excepted from statutory subject matter.
Accordingly, we sustain the rejection of independent claim 1, with claims 2-
4, 6, 7, 10-14, and 17-21 falling therewith.
DECISION
The Examiner's decision to reject claims 1--4, 6, 7, 10-14, and 17-21
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). 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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