Ex Parte Whitman

Patent Trial and Appeal Board

Feb 20, 2018

13910262 (P.T.A.B. Feb. 20, 2018)

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.
13/910,262 06/05/2013 Michael P. Whitman H-PM-00014CON2(1800-14CN2 3843
50855 7590 02/22/2018
Covidien LP
60 Middletown Avenue
Mailstop 54, Legal Dept.
North Haven, CT 06473
EXAMINER
BURGESS, JOSEPH D
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
02/22/2018 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):
SurgicalUS@covidien.com
medtronic_mitg-si_docketing@cardinal-ip.com
mail @ cdfslaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL P. WHITMAN
Appeal 2016-003856
Application13/910,262* 1
Technology Center 3600
Before CARL W. WHITEHEAD JR., ADAM PYONIN and
JEFFREY S. SMITH, Administrative Patent Judges.
WHITEHEAD JR., Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant is appealing the Examiner’s Final rejection of claims 1—20
under 35 U.S.C. § 134(a). Appeal Brief 2. We have jurisdiction under 35
U.S.C. § 6(b) (2012).
We AFFIRM.
Introduction
The invention is directed to “tracking of information provided by
medical devices including electro-mechanical surgical devices.”
Specification, 13.
1 Appellant identifies Covidien LP as the real party in interest. Appeal Brief
1.
Appeal 2016-003856
Application 13/910,262
Illustrative Claim
Claim 1 is illustrative below:
1. A wireless medical communication system for tracking medical
information, comprising:
at least one server;
a plurality of wireless handheld surgical staplers for automatically and
wirelessly transmitting/receiving the medical information to/from the at least
one server upon actuation of at least one of the plurality of wireless handheld
surgical staplers to perform a surgical procedure on a patient; and
a hospital or medical care environment information network
configured to wirelessly communicate (i) directly with the at least one server
or (ii) directly with the plurality of wireless handheld surgical staplers;
wherein the medical information collected by the plurality of wireless
handheld surgical staplers is generated in real-time in response to interaction
between at least one of the plurality of wireless handheld surgical staplers
and tissue; and
wherein the medical information collected is automatically and
wirelessly integrated with patient data located in the hospital or medical care
environment information network in order to create an updated patient
profile.
Rejections on Appeal
Claims 1—20 stand rejected under 35U.S.C. §101 because the claimed
invention is directed to nonstatutory subject matter. Final Action 2—3.
Claims 1—7, 9—12 and 14—19 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Malackowski (US Patent Application
2
Appeal 2016-003856
Application 13/910,262
Publication 2001/0034530 Al; published October 25, 2001), Hooven (US
Patent 5,383,880; issued January 24, 1995) and Reeves (US Patent
7,778,848 Bl; issued August 17, 2010). Final Action 3—9.
Claims 8, 13 and 20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Malackowski, Hooven, Reeves and Tierney (US Patent
6,331,181 Bl; issued December 18, 2001). Final Action 9—10.
ANALYSIS
Rather than reiterate the arguments of Appellant and the Examiner,
we refer to the Appeal Brief (filed March 24, 2016), the Final Rejection
(mailed November 5, 2015) and the Answer (mailed September 8, 2016) for
the respective details.
35 U.S.C. $101 rejection
The U. S. Supreme Court provides a two-step test for determining
whether a claim is directed to patent-eligible subject matter under 35 U.S.C.
§ 101.2 In the first step, we determine whether the claims are directed to one
or more judicial exceptions (i.e., law of nature, natural phenomenon, and
abstract ideas) to the four statutory categories of invention (i.e., process,
machine, manufacture, and composition of matter). Alice, 124 S.Ct. at 2354
(citations omitted) (citing Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 132 S.Ct. 1289, 1296—97 (2012), “Mayo”). Prior cases are replete with
decisions finding software that organizes and manipulates data, similar to
that recited by the present claims, to be directed to ineligible abstract ideas.
See, e.g., Intellectual Ventures ILLC v. Erie Indem. Co., 850 F.3d 1315,
2 Alice Corp. Pty. Ltd. v. CLS Bank Inti, 124 S.Ct. 2347, 2354 (2014)
(hereinafter “Alice”.
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Application 13/910,262
1327 (Fed. Cir. 2017) (“[Cheating an index and using that index to search
for and retrieve data.”); Elec. Power Group v. Alstom S.A., 830 F.3d 1350,
1353 (Fed. Cir. 2016) (Collection, manipulation, and display of data.);
Intellectual Ventures ILLC v. Capital One Bank (USA), 792 F.3d 1363,
1370 (Fed. Cir. 2015) (Customizing information and presenting it to users
based on particular characteristics.); Content Extraction and Transmission
LLC v. Wells Fargo Bank, National Ass 'n, 776 F.3d 1343, 1347 (Fed. Cir.
2014) (“[Collecting data, [] recognizing certain data within the collected
data set, and [] storing that recognized data in a memory”).
In the second step, we “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.” Id. (citing Mayo, 132 S.Ct. at 1297—98). In other
words, the second step is to “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.” Id. (citing Mayo, 132 S.Ct. at 1294).
Appellant argues the 35 U.S.C. § 101 rejection is erroneous because:
[T]he claims recite processing of medical information based on
interactions between tissue and attachments of a plurality of
wireless handheld surgical staplers to allow a surgeon to perform
a surgical stapling procedure on a patient. Also, the medical
information is integrated with patient data to create an updated
patient profile automatically and in real-time. Clearly these
functions/operations/processes amount to more than an abstract
idea.
Appeal Brief 5.
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Application 13/910,262
Appellant further argues “the claims do not merely organize an
existing human activity. Instead, the claims recite the creation of new
medical information (i.e., updated patient profiles) that occurs during a
surgical procedure on a patient, in real-time, and to continuously create
updated patient profiles as a surgical procedure takes place.” Appeal Brief
6.
We agree with the Examiner’s findings,3 that the claims are directed
to a judicially recognized exception as the claims recite an abstract idea,4
because the claims are directed to data gathering, storing and processing and
that claims involving data collection, analysis, and display have been found
to be directed to an abstract idea. See Elec. Power Grp. v. Alstom S.A., 830
F.3d 1350, 1353 (Fed. Cir. 2016) (Holding that “collecting information,
analyzing it, and displaying certain results of the collection and analysis” are
“a familiar class of claims ‘directed to’ a patent-ineligible concept.”); see
also In re TLI Commc’ns LLCPatentLitig., 823 F.3d 607, 611 (Fed. Cir.
2016); FairWarningIP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093—94
(Fed. Cir. 2016).
Further, the claims in the instant application, unlike the claims found
non-abstract in prior cases, use generic computer technology to perform data
collection, analysis, and display and do not recite an improvement to a
particular computer technology. See, e.g., McRO, Inc. v. Bandai Namco
Games Am. Inc., 837 F.3d 1299, 1314—15 (Fed. Cir. 2016) (Finding claims
not abstract because they “focused on a specific asserted improvement in
3 See Answer 4.
4 See Alice Corp. v. CLS Bank International, 134 S.Ct. 2347, 2355—56
(2014).
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Appeal 2016-003856
Application 13/910,262
computer animation.”); compare Specification || 4—5, 17. As such, we agree
that the other recitations in the claims do not amount to significantly more
than the abstract idea.
In any case, as we stated above, our reviewing court has repeatedly
held that claims directed to data storage and analysis such as the instant
claims are directed to abstract ideas. See, e.g., Internet Patents Corp. v.
Active Network, Inc., 790 F.3d 1343, 1349 (Fed. Cir. 2015); OIP Techs., Inc.
v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015), cert, denied, 136
S. Ct. 701 (2015); Content Extraction & Transmission LLC v. Wells Fargo
Bank, Nat’l Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014); Digitech Image
Techs., LLCv. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir.
2014); CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370
(Fed. Cir. 2011).
Subsequently, we sustain the Examiner’s 35U.S.C. §101 rejection of
claims 1—20.
35 U.S.C. §103 rejection
Appellant argues that the obviousness rejection is improper because,
“Malackowski, Hooven, and Reeves do not disclose ‘wirelessly integrating
patient data’ with medical information stored in ‘hospital or medical care
environment information network’ in order to ‘create an updated patient
profile,’ as recited in amended independent claim 1.” Appeal Brief 8.
Appellant contends the Examiner’s findings that Reeves (column 3, lines
38-47; claim 11) teaches updating the patient’s profile is erroneous. Appeal
Brief 8; see Final Action 4.
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Application 13/910,262
Appellant argues:
Nowhere does this portion of Reeves teach or suggest “updating
of patient data.” However, claim 11 does teach “updating . . .
digital medical records.” Nevertheless, such data is updated to
“facilitate emergency medical treatment of the user” of the
bodily worn device. In contrast, claim 1 recites integrating
medical information collected from surgical devices during a
surgical procedure with patient data of a hospital or medical
environment network to create updated patient profiles which are
fed back into the wireless handheld surgical devices as the
surgical procedure takes place in order to influence the surgical
procedure in real-time.
Appeal Brief 8.
We do not find Appellant’s arguments persuasive because they are not
commensurate with the scope of the claims. Claim 1 requires, “a plurality of
wireless handheld surgical staplers for automatically and wirelessly
transmitting/receiving the medical information to/from the at least one server
upon actuation of at least one of the plurality of wireless handheld surgical
staplers to perform a surgical procedure on a patient.” The claim requires
transmitting/receiving medical information upon actuation of the surgical
stapler and does not limit integrating or updating the patient’s profile upon
initiation of the surgical procedure.
Further, we find there is not a patentable distinction between the
claimed “updating a patient data” and “updating [] digital medical records”
as taught by Reeves. “As our precedents make clear, however, the analysis
need not seek out precise teachings directed to the specific subject matter of
the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.” KSR
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Appeal 2016-003856
Application 13/910,262
Int’l v. Teleflex Inc., 550 U.S. 398, 418 (2007). Accordingly, we sustain the
obviousness rejection of independent claims 1 and 14, as well as, dependent
claims 2—7, 9—12 and 15—19 not separately argued. See Appeal Brief 8—9.
Appellant argues the obviousness rejection of dependent claims 8, 13
and 20 is erroneous because Tierney fails to “cure any deficiencies of
Malackowski, Hooven, and Reeves.” Appeal Brief 9—10. We do not find
Appellant’s argument persuasive because we did not find the combination of
Malackowski, Hooven and Reeves deficient. Accordingly, we sustain the
Examiner’s obviousness rejection of dependent claims 8, 13 and 20.
DECISION
The Examiner’s nonstatutory subject matter rejection of claims 1—20
is sustained.
The Examiner’s obviousness rejections of claims 1—20 is sustained.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(l)(v).
AFFIRMED
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