Harold Arkoff

Patent Trials and Appeals Board

Nov 7, 2019

13651058 - (D) (P.T.A.B. Nov. 7, 2019)

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.
13/651,058 10/12/2012 Harold Arkoff Ark101 1025
63626 7590 11/07/2019
DAVID B. WEST
99 PINE BROOK RD.
CARLISLE, MA 01741
EXAMINER
TOMASZEWSKI, MICHAEL
ART UNIT PAPER NUMBER
3686
MAIL DATE DELIVERY MODE
11/07/2019 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 HAROLD ARKOFF
Appeal 2018-006585
Application 13/651,058
Technology Center 3600
Before ELENI MANTIS MERCADER, DAVID C. MCKONE, and
JOHN P. PINKERTON, Administrative Patent Judges.
MANTIS MERCADER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 21–40. See Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as the named inventor,
Dr. Harold Arkoff of Sudbury. Appeal Br. 1.
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CLAIMED SUBJECT MATTER
The claims are directed to an operating room management system.
Claim 21, reproduced below, is illustrative of the claimed subject matter:
21. A system for providing information about addons to
operating room schedules in a hospital with a plurality of shift
changes, comprising:
a display capable of displaying the daily schedule for an
operating room of said hospital, said schedule being capable of
being updated in real time, and wherein said schedule provides
information about an addon running past a shift change.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Hunter
McLaren
Meinel
Rotunda
US 2002/0040313 A1
US 2010/0305972 A1
US 2010/0318470 A1
US 2010/0332255 A1
Apr. 4, 2002
Dec. 2, 2010
Dec. 16, 2010
Dec. 30, 2010

REJECTIONS
Claims 21–40 are rejected under 35 U.S.C. § 101 as being directed to
a judicial exception (i.e., a law of nature, a natural phenomenon, or an
abstract idea); and not directed to significantly more than the abstract idea
itself.
Claims 21, 23, 25, 26, 28, 30, 32, 33, 35, 37, 39 and 40 are rejected
under 35 U.S.C. § 103(a) as being unpatentable over Rotunda, in view of
McLaren, and further in view of Hunter. Final Act. 4.
Claims 22, 24, 27, 29, 31, 34, 36 and 38 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Rotunda, in view of McLaren, and
Hunter, and further in view of Meinel. Final Act. 9.
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OPINION
Except where indicated, we adopt the Examiner’s findings in the
Answer and Final Office Action and we add the following primarily for
emphasis. We note that if Appellant failed to present arguments on a
particular rejection, we decline to review unilaterally those uncontested
aspects of the rejection. See Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI
2010) (precedential); Hyatt v. Dudas, 551 F.3d 1307, 1313–14 (Fed. Cir.
2008) (the Board may treat arguments Appellant failed to make for a given
ground of rejection as waived).
Claims 21–40 rejected under 35 U.S.C. § 101
Appellant argues that the Examiner improperly relies on Cyberfone2
because the case is factually different from the current case. See Appeal
Br. 5.
We are not persuaded by Appellant’s argument. An invention is
patent-eligible if it claims a “new and useful process, machine, manufacture,
or composition of matter.” 35 U.S.C. § 101. However, the Supreme Court
has long interpreted 35 U.S.C. § 101 to include implicit exceptions: “[l]aws
of nature, natural phenomena, and abstract ideas” are not patentable. E.g.,
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (internal quotation
marks and citation omitted).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus

2 Appellant cites Cyberfone Systems, LLC v. CNN Interactive Group, Inc.,
558 Fed. Appx. 988 (Fed. Cir. 2014).
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Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See Alice, 573
U.S. at 219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and, thus, patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 176; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, . . . and this principle cannot be circumvented by
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attempting to limit the use of the formula to a particular technological
environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (internal citation omitted). “A
claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
The PTO recently published revised guidance on the application of
§ 101. USPTO’s January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance (“Memorandum”). Under that
guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see Manual of Patent Examining
Procedure (MPEP) § 2106.05(a)–(c), (e)–(h) (9th Ed., Rev.
08.2017, Jan. 2018)).
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Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
are not “well-understood, routine, conventional” in the field
(see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See Memorandum.
In the instant case, we adopt the Examiner’s finding that claim 28 as a
whole recites a certain method of organizing human activity. Ans. 5. The
same applies for system claim 21 and apparatus claim 35. See Id. The
system claim 21 and apparatus claim 35, as well as the method claim 28,
recite “a display capable of displaying the daily schedule for an operating
room of said hospital, said schedule being capable of being updated in real
time, and wherein said schedule provides information about an addon
running past a shift change.” See claims 21, 28, and 35.
This limitation, as drafted, provides a system (claims 21) and
apparatus (claim 35) as well as a process (claim 28) that, under its broadest
reasonable interpretation, allows a user to provide information about addons
to operating room schedules in a hospital with a plurality of shift changes by
displaying the daily schedule for an operating room and the schedule being
capable of being updated in real time, and wherein the schedule provides
information about an addon running past a shift change. Thus, the limitation
recites organizing human activity (i.e., organizing the operating room
schedule) and in particular, managing interactions between people (i.e.,
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personnel). In other words, the limitation pertains to displaying a schedule
of personnel including potential addons running past a shift change. Thus,
under Step 2A, prong 1, claims 21, 28, and 35 recite an abstract idea. See
Memorandum.
We note in passing that we agree with the Examiner that the recited
limitation in all of the independent claims enumerated above is similar to
using categories to organize, store and transmit information, as identified in
the Cyberfone decision, because the claims define using operating room
schedules and addons as categories to organize, store and transmit
information from the system to the display. See Ans. 5. The claims are also
similar to collecting, displaying, and manipulating data, as identified in the
precedential decision of Intellectual Ventures I LLC v. Capital One Bank
(USA), 792 F.3d 1363 (Fed. Cir. 2015), because the claims define collecting
information (i.e., operating room schedules, addons), displaying information
(i.e., operating room schedules, addons) and manipulating data (i.e.,
schedules based on shift changes, addons, etc.). Id.
Because claim 28 recites a certain method of organizing human
activity similar to system claim 21 and apparatus claim 35, we proceed to
Step 2A, prong 2––i.e., we determine whether the system, apparatus and
method claims of organizing human activity and in particular managing
interactions between people are integrated into a practical application.
The mere nominal recitation of a generic “display” is recited at a high
level of generality (i.e., as a generic display capable of displaying a daily
schedule and real time updates). The “display” is recited at a high level of
generality and does not take claim 28 out of a certain method of organizing
human activity pertaining to managing interactions between people (i.e.,
shifts of hospital personnel). The same applies to claims 21 and 35. The
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mere nominal recitation of generic computer structure (i.e., a display) that
serves to perform generic computer functions merely links the abstract idea
to a particular technological environment. As stated in Appellant’s
Specification, “[s]chedule 8 and other data may be displayed on for example
digital whiteboards, desktop displays, tablet computers, or mobile devices.”
See Spec. para. 31 and Ans. 5–6. Thus, we agree with the Examiner’s
finding that Appellant’s Specification recites that the invention can be
implemented by generic computing devices and displays. See Ans. 5–6
citing Spec. paras. 29–31.
As explained in OIP Technologies, Inc. v. Amazon.com, Inc., 788 F.3d
1359, 1363 (Fed. Cir. 2015), “relying on a computer to perform routine tasks
more quickly or more accurately is insufficient to render a claim patent
eligible.” See also Alice, 573 U.S. at 224 (“use of a computer to create
electronic records, track multiple transactions, and issue simultaneous
instructions” is not an inventive concept). Simply adding a ‘computer aided’
limitation to a claim covering an abstract concept, without more, is
insufficient to render the claim patent eligible.” Dealertrack, Inc. v. Huber,
674 F.3d 1315, 1333 (Fed. Cir. 2012). Simply implementing the abstract
idea on a generic display is not a practical application of the abstract idea
under Step 2A, prong 2.
Under Step 2B, each of the claims 21, 28, and 35 as a whole merely
describes the concept of displaying the daily schedule for an operating room
of the hospital, the schedule being capable of being updated in real time, and
wherein the schedule provides information about an addon running past a
shift change, and thus, the claims do not plainly represent improvements to
technology but instead merely perform more efficiently what could be
accomplished manually. Appellant’s Specification discloses general
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purpose computing systems using standard programming techniques. See
Spec. paras. 29–31. Thus, even viewed as a whole, nothing in the claim
adds significantly more (i.e., an inventive concept) to the abstract idea.
Thus, independent claims 21, 28, and 35 are ineligible. Similarly dependent
claims 22–27, 29–34, and 36–40 are ineligible for at least the reasons stated
above.
Thus, we sustain the Examiner’s rejection of claims 21–40 under 35
U.S.C. § 101.
Claims 21, 23, 25, 26, 28, 30, 32, 33, 35, 37, 39 and 40 rejected under
35 U.S.C. § 103(a) as being unpatentable over Rotunda, McLaren, and
Hunter.
Appellant admits that Rotunda teaches a system for providing
information about addons to operating room schedules in a hospital but
according to Appellant, Rotunda does not teach shift changes or show a
recognition of the resource problems that may be caused by hospital shift
changes. Appeal Br. 6–7.
Appellant further argues that in McLaren, there is a single mention of
a facility shift change possibly necessitating a handoff of medical role(s)
between medical professionals. Appeal Br. 7 citing para. 74. However,
according to Appellant, this role-handoff could have been planned for
months in advance and fully incorporated in the creation of the daily
schedule and there is no indication that the role-handoff might be
unexpected and that an operating room itself and perhaps special equipment
associated with the patient case will be urgently needed. Id.
Appellant further argues that there is no motivation to combine
Hunter’s amusement park human resources system with the medical
disclosures of Rotunda and McLaren. Appeal Br. 7–8.
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We do not agree with Appellant’s argument. One cannot show
nonobviousness by attacking references individually where the rejections are
based on combinations of references. In re Keller, 642 F. 2d 413, 425
(CCPA 1981); In re Merck & Co., Inc., 800 F. 2d 1091, 1096 (Fed. Cir.
1986). We agree with the Examiner that Rotunda teaches a display system
capable of displaying information, such as, schedules including shifts and
addons. See Ans. 7 citing Rotunda paras. 3, 38, 45, 52–56; FIGS. 2–13. We
further agree with the Examiner that Rotunda explicitly teaches addons on
the schedule wherein the addons are scheduled on the same day. See paras.
38 and 54. We also agree that McLaren teaches a system capable of
displaying schedules, including shift changes (i.e., handing off case roles).
See Ans. 7 and McLaren paras. 11 and 74. We further agree with the
Examiner that Hunter teaches a system capable of displaying and updating
schedules in real-time including extended workdays (i.e., running past a shift
change). See Ans. 7 and Hunter paras. 8, 26, 30, 34.
We agree with the Examiner that it would have been obvious to one of
ordinary skill in the art, at the time the invention, to combine the teachings
of the real time scheduling system, as taught by Hunter, the mobile
electronic case board, as taught by McLaren, and the system for displaying
medical procedure data, as taught by Rotunda, with the motivation of
improving human resource scheduling. See Hunter paras. 3–7. In other
words, it would have been obvious to display and update schedules in real
time running past shift changes as taught by Hunter, and the schedule can be
modified based on addons as taught by Rotunda and based on shift changes
as taught by McLaren. “[W]hen a patent ‘simply arranges old elements with
each performing the same function it had been known to perform’ and yields
no more than one would expect from such an arrangement, the combination
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is obvious.” KSR Int’l Co. v. Teleflex Inc. 550 U.S. 398, 417 (2007)
(quoting Sakraida v. AG Pro, Inc., 425 U.S. 273, 282 (1976)).
Thus, we sustain the Examiner’s rejection of claims 21, 23, 25, 26, 28,
30, 32, 33, 35, 37, 39 and 40 under 35 U.S.C. § 103(a).
Claims 22, 24, 27, 29, 31, 34, 36 and 38 rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Rotunda, McLaren, Hunter, and
Meinel.
Appellant admits that Meinel teaches digital whiteboards but argues
that it does not contemplate medical or scheduling applications. Appeal, Br.
9. Appellant asserts that Meinel is non-analogous art. Id.
We do not agree with Appellant’s argument. Two separate tests
define the scope of analogous prior art: (1) whether the art is from the same
field of endeavor, regardless of the problem addressed and, (2) if the
reference is not within the field of the inventor’s endeavor, whether the
reference still is reasonably pertinent to the particular problem with which
the inventor is involved. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)
citing In re Deminski, 796 F.2d 436, 442 (Fed. Cir. 1986).
We agree with the Examiner that Meinel pertains to information
technology and in particular, to processing and displaying information at
different locations using whiteboard technology to facilitate collaboration.
Ans. 8. We agree with the Examiner that Meinel is both within the field of
Appellant’s endeavor and reasonably pertinent to the particular problem with
which Appellant is concerned. Id.
We further agree with the Examiner that the motivation to combine
the teachings of McLaren with the teachings of Rotunda is to facilitate
efficient communication of medical information; the motivation to combine
the teachings of Hunter with the teachings of Rotunda and McLaren is to
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improve human resource scheduling; and the motivation to combine the
teachings of Meinel with the teachings Rotunda, McLaren and Hunter is to
facilitate synchronization and collaboration between people. Ans. 8.
Thus, we sustain the Examiner’s rejection of claims 22, 24, 27, 29, 31,
34, 36 and 38 under 35 U.S.C. § 103(a).

CONCLUSION
The Examiner’s rejection of claims 21–40 under 35 U.S.C. § 101 as
being directed to a judicial exception (i.e., a law of nature, a natural
phenomenon, or an abstract idea); and not directed to significantly more than
the abstract idea itself is affirmed.
The Examiner’s rejection of claims 21, 23, 25, 26, 28, 30, 32, 33, 35,
37, 39 and 40 under 35 U.S.C. § 103(a) as being unpatentable over Rotunda
in view of McLaren and further in view of Hunter is affirmed.
The Examiner’s rejection of claims 22, 24, 27, 29, 31, 34, 36 and 38
under 35 U.S.C. § 103(a) as being unpatentable over Rotunda, McLaren, and
Hunter, and further in view of Meinel is affirmed.

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DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Basis  Affirmed
21–40 101 Eligibility 21–40
21, 23, 25,
26, 28, 30,
32, 33, 35,
37, 39, 40
103(a) Rotunda, McLaren, and
Hunter 
21, 23, 25,
26, 28, 30,
32, 33, 35,
37, 39, 40
22, 24, 27,
29, 31, 34,
36, 38
103(a) Rotunda, McLaren,
Hunter, and Meinel
22, 24, 27,
29, 31, 34,
36, 38
Overall Outcome: 21–40

TIME PERIOD FOR RESPONSE
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)(1)(iv).
AFFIRMED