International Business Machines Corporation

Patent Trials and Appeals Board

Mar 1, 2022

2021002180 (P.T.A.B. Mar. 1, 2022)

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. 14/861,090 09/22/2015 Corville O. Allen AUS920140356US2 1562 65362 7590 03/01/2022 TERRILE, CANNATTI & CHAMBERS, LLP IBM Austin P.O. BOX 203518 AUSTIN, TX 78720 EXAMINER WINSTON III, EDWARD B ART UNIT PAPER NUMBER 3626 NOTIFICATION DATE DELIVERY MODE 03/01/2022 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): USPTO@dockettrak.com tmunoz@tcciplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE _______________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _______________ Ex parte CORVILLE O. ALLEN, JOHANNA M. COOK, and ANDREW R. FREED _______________ Appeal 2021-002180 Application 14/861,090 Technology Center 3600 _______________ Before ROBERT E. NAPPI, CATHERINE SHIANG, and JAMES W. DEJMEK, Administrative Patent Judges. DEJMEK, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from a Final Rejection of claims 1-8. Appellant has canceled claims 9-20. See Appeal Br. 9. We have jurisdiction over the remaining pending claims under 35 U.S.C. § 6(b). We affirm. 1 Throughout this Decision, we use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42 (2019). Appellant identifies International Business Machines Corporation as the real party in interest. Appeal Br. 1. Appeal 2021-002180 Application 14/861,090 2 STATEMENT OF THE CASE Introduction Appellant’s disclosed and claimed invention generally relates to “conditionally overriding strict criteria for a prospective medical treatment.” Spec. ¶¶ 1, 6. According to the Specification, a strict criterion relates to an explicit treatment rule or principle. Spec. ¶ 39. In a disclosed embodiment, “a determination is made during evaluation of a patient’s medical condition whether their condition should be treated as a strict evaluation or as a conditional evaluation.” Spec. ¶ 40. A strict evaluation evaluates the patient’s medical condition according to strict criteria, whereas a conditional evaluation evaluates the patient’s medical condition by overriding certain strict criteria with conditional criteria. Spec. ¶ 40. As an example, the Specification describes a strict criterion may be a patient’s age (e.g., less than 60 years old). Spec. ¶¶ 39, 45. However, if it is determined that the patient meets other criteria (e.g., is active and can perform some light exercise), the strict criterion of being less than 60 years old may be overridden and a treatment regimen that would otherwise have been restricted to the patient is conditionally available. Spec. ¶¶ 45-47. Claim 1 is representative of the subject matter on appeal and is reproduced below with the disputed limitation emphasized in italics: 1. A computer-implemented method for answering questions based upon conditional criteria via a question/answer (QA) system executing on a hardware processor, the QA system having an associated criteria conditional override system, comprising: performing an evaluation of a medical condition of a person, the evaluation comprising accessing patient medical record data, the patient medical record data being stored within a patient medical record data repository; Appeal 2021-002180 Application 14/861,090 3 receiving an input corpus to the QA system via a network, the input corpus comprising a question having an associated first condition, the input corpus being stored within a medical corpus data repository, the QA system comprising a knowledge manager and a knowledge base, the QA system using natural language processing to analyze the input corpus and extract question topic information contained in the question, the question being related to the medical condition associated with the person; determining via the QA system executing on the hardware processor, whether the medical condition should be evaluated using one of a strict evaluation and a conditional evaluation, the strict evaluation and the conditional evaluation being obtained from associated strict and conditional treatment data, the strict and conditional treatment data being stored within a strict and conditional treatment data repository, the strict treatment data being used to retrieve associated strict criteria, the strict evaluation evaluating the medical condition of the person according to the strict criteria, the conditional evaluation evaluating the medical condition of the person according to associated conditions that result in the strict criteria being overridden by conditional criteria corresponding to the associated conditions, the strict criteria being overridden based upon supporting evidence not found within the strict criteria; receiving criteria for answering the question to the QA system, the criteria being associated with the associated first condition and received by the QA system configured to answer questions; identifying a second condition affecting the first condition via the criteria conditional override system; and answering, via the QA system, the question with a modification of the first condition via the criteria conditional override system, the answering performed in response to determining that the second condition exceeds a threshold. Appeal 2021-002180 Application 14/861,090 4 The Examiner’s Rejections 1. Claims 1-8 stand rejected under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter. Final Act. 2-4. 2. Claims 1-8 stand rejected under 35 U.S.C. § 103 as being unpatentable over McIlroy et al. (US 5,953,704; Sept. 14, 1999) (“McIlroy”); Byron et al. (US 2016/0078349 A1; Mar. 17, 2016) (“Byron”); and Hussam (US 8,756,072 B2; June 17, 2014). Final Act. 5-11. ANALYSIS2 Rejection under 35 U.S.C. § 101 Appellant disputes the Examiner’s conclusion that the pending claims are directed to patent-ineligible subject matter. Appeal Br. 3-4. In particular, Appellant argues the claims do not recite one of the identified categories of abstract ideas (i.e., certain methods of organizing human activity, mathematical concepts, or mental processes). Appeal Br. 3-4. More specifically, Appellant argues the claims “are not directed to something that could practically, reasonably be performed in the human mind.” Appeal Br. 3. Additionally, Appellant argues the claims recite more than a method of organizing human activity. Appeal Br. 4. Moreover, Appellant asserts that claims are directed to a practical application of 2 Throughout this Decision, we have considered the Appeal Brief, filed July 28, 2020 (“Appeal Br.”); the Examiner’s Answer, mailed November 6, 2020 (“Ans.”); and the Final Office Action, mailed January 15, 2020 (“Final Act.”), from which this Appeal is taken. Appellant did not file a Reply Brief. To the extent Appellant has not advanced separate, substantive arguments for particular claims or issues, such arguments are considered waived. See 37 C.F.R. § 41.37(c)(1)(iv). Appeal 2021-002180 Application 14/861,090 5 enabling a QA system to answer a question with a modification of the first condition via a criteria conditional override system. Appeal Br. 4. The Supreme Court’s two-step framework guides our analysis of patent eligibility under 35 U.S.C. § 101. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014). In addition, the Office has published revised guidance for evaluating subject matter eligibility under 35 U.S.C. § 101, specifically with respect to applying the Alice framework. USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Office Guidance”).3 If a claim falls within one of the statutory categories of patent eligibility (i.e., a process, machine, manufacture, or composition of matter) then the first inquiry is whether the claim is directed to one of the judicially recognized exceptions (i.e., a law of nature, a natural phenomenon, or an abstract idea). Alice, 573 U.S. at 217. As part of this inquiry, we must “look at the ‘focus of the claimed advance over the prior art’ to determine if the claim’s ‘character as a whole’ is directed to excluded subject matter.” Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257-58 (Fed. Cir. 2016). Per the Office Guidance, this first inquiry (“Step 2A”) has two prongs of analysis: (i) does the claim recite (i.e., set forth or describe) a judicial exception (e.g., an abstract idea such as a mental process), and (ii) if so, is the judicial exception integrated into a practical application. MPEP § 2106.04(II)(A). Under the Office Guidance, if the judicial exception is integrated into a practical application, see infra, the claim is patent eligible 3 The Office Guidance, as well as guidance set forth in the Berkheimer Memorandum, have been incorporated into the latest revision of the Manual of Patent Examination Procedure (“MPEP”) §§ 2103-2106.07(c) (9th ed., Rev. 10.2019, June 2020). Appeal 2021-002180 Application 14/861,090 6 under § 101. MPEP § 2106.04(d). If the claim is directed to a judicial exception (i.e., recites a judicial exception and does not integrate the exception into a practical application), the next step (“Step 2B”) is to determine whether any element, or combination of elements, amounts to significantly more than the judicial exception. Alice, 573 U.S. at 217; see also MPEP § 2106.05. If a claim, under its broadest reasonable interpretation, covers performance in the mind but for the recitation of generic computer components, then it is still in the mental processes category unless the claim cannot practically be performed in the mind. See Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016) (“[W]ith the exception of generic computer-implemented steps, there is nothing in the claims themselves that foreclose them from being performed by a human, mentally or with pen and paper.”); see also CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372-73 (Fed. Cir. 2011) (holding that the incidental use of a “computer” or “computer readable medium” does not make a claim otherwise directed to a process that “can be performed in the human mind, or by a human using a pen and paper” patent eligible); Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71 (2012) (explaining mental processes are not patentable); MPEP § 2106.04(a)(2)(III). Contrary to Appellant’s assertions, we agree with the Examiner that the claims cover performance in the mind (e.g., evaluating the medical condition of a person) but for the recitation of generic computer components-i.e., a mental process (i.e., an observation, evaluation, judgment, or opinion). See Final Act. 2-4; Ans. 4-5; see also MPEP Appeal 2021-002180 Application 14/861,090 7 § 2106.04(a)(2)(III). As set forth in Appellant’s Specification, the evaluation of strict criteria to determine whether it can be overridden is “akin to how medical practitioners and technicians evaluate criteria.” Spec. ¶ 53; see also Spec. ¶ 5 (noting that a physician will often “rely on his or her professional judgment” to determine whether certain criteria of treatment guidelines are applicable for a specific patient). In addition, we note that the instant claims are similar to those at issue in SmartGene, Inc. v. Advanced Biological Labs., SA, 555 F. App’x 950 (Fed. Cir. 2014) (unpublished). In SmartGene, the court determined the claims define a “method for guiding the selection of a therapeutic treatment regimen for a patient with a known disease or medical condition.” SmartGene, 555 F. App’x at 954 (internal quotation omitted). The court further explained that, but for the use of a computing device, comparing stored and input data and rules are what doctors do routinely. SmartGene, 555 F. App’x at 954. The court concluded the mental steps of comparing new and stored information and using rules to identify medical options fell within the category of mental processes excluded by § 101. SmartGene, 555 F. App’x at 955. Thus, we conclude Appellant’s claim recites an abstract idea. More specifically, Appellant’s claim generally describes providing a modified answer to a question related to a medical condition of a person when a mitigating (second) condition is identified.4 This is consistent with how 4 Although we describe the abstract idea slightly differently than the Examiner, the Examiner’s characterization of the idea is not erroneous. “An abstract idea can generally be described at different levels of abstraction.” Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016). The level of abstraction an examiner uses to describe an abstract idea need not Appeal 2021-002180 Application 14/861,090 8 Appellant describes the claimed invention. See Appeal Br. 4 (describing the claimed invention as “answer[ing] a question with a modification of the first condition via the criteria conditional override system, the answering being performed in response to determining that the second condition exceeds a threshold”); see also Spec. ¶¶ 6-7 (describing conditionally overriding strict criteria for answering a question when a second condition is identified). Claim 1 is reproduced below and includes the following claim limitations that describe (i.e., recite) the concept of providing a modified answer to a question related to a medical condition of a person when a mitigating (second) condition is identified, emphasized in italics: 1. A computer-implemented method for answering questions based upon conditional criteria via a question/answer (QA) system executing on a hardware processor, the QA system having an associated criteria conditional override system, comprising: performing an evaluation of a medical condition of a person, the evaluation comprising accessing patient medical record data, the patient medical record data being stored within a patient medical record data repository; receiving an input corpus to the QA system via a network, the input corpus comprising a question having an associated first condition, the input corpus being stored within a medical corpus data repository, the QA system comprising a knowledge manager and a knowledge base, the QA system using natural language processing to analyze the input corpus and extract question topic “impact the patentability analysis.” Apple, 842 F.3d at 1241. That is true here. Regardless of the level of generality used to describe the abstract idea recited, the claim is directed to an abstract idea. Cf. Accenture Glob. Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1344-45 (Fed. Cir. 2013) (“Although not as broad as the district court’s abstract idea of organizing data, it is nonetheless an abstract concept.”). Appeal 2021-002180 Application 14/861,090 9 information contained in the question, the question being related to the medical condition associated with the person; determining via the QA system executing on the hardware processor, whether the medical condition should be evaluated using one of a strict evaluation and a conditional evaluation, the strict evaluation and the conditional evaluation being obtained from associated strict and conditional treatment data, the strict and conditional treatment data being stored within a strict and conditional treatment data repository, the strict treatment data being used to retrieve associated strict criteria, the strict evaluation evaluating the medical condition of the person according to the strict criteria, the conditional evaluation evaluating the medical condition of the person according to associated conditions that result in the strict criteria being overridden by conditional criteria corresponding to the associated conditions, the strict criteria being overridden based upon supporting evidence not found within the strict criteria; receiving criteria for answering the question to the QA system, the criteria being associated with the associated first condition and received by the QA system configured to answer questions; identifying a second condition affecting the first condition via the criteria conditional override system; and answering, via the QA system, the question with a modification of the first condition via the criteria conditional override system, the answering performed in response to determining that the second condition exceeds a threshold. More specifically, the concept of providing a modified answer to a question related to a medical condition of a person when a mitigating (second) condition is identified comprises (i) receiving a question related to a medical condition of a person (i.e., the claimed step of receiving an input corpus); (ii) identifying the presence of a mitigating condition (i.e., the claimed step of identifying a second condition affecting the first condition); and (iii) modifying the answer (i.e., the answer based on application of a Appeal 2021-002180 Application 14/861,090 10 strict criteria) to the received question in view of the identified mitigating condition (i.e., the claimed steps of performing an evaluation of a medical condition, determining whether to answer the question using one of a strict evaluation and conditional evaluation, and answering the received question with a modification of the first condition in response to the identification of the mitigating (second) condition). Because the claim recites a judicial exception, we next determine whether the claim integrates the judicial exception into a practical application. MPEP § 2106.04(d). To determine whether the judicial exception is integrated into a practical application, we identify whether there are “any additional elements recited in the claim beyond the judicial exception(s)” and evaluate those elements to determine whether they integrate the judicial exception into a recognized practical application. MPEP § 2106.04(d)(II) (emphasis added); see also MPEP § 2106.05(a)-(c), (e)-(h). Here, we find the additional limitations do not integrate the judicial exception into a practical application. More particularly, the claim does not recite (i) an improvement to the functionality of a computer or other technology or technical field (see MPEP § 2106.05(a)); (ii) a “particular machine” to apply or use the judicial exception (see MPEP § 2106.05(b)); (iii) a particular transformation of an article to a different thing or state (see MPEP § 2106.05(c)); or (iv) any other meaningful limitation (see MPEP § 2106.05(e)). The additional limitation beyond the judicial exception are (i) a QA system that uses natural language processing to analyze the input corpus and extract question topic information and that further comprises a knowledge Appeal 2021-002180 Application 14/861,090 11 manager and a knowledge base; (ii) storage repositories for the input corpus (i.e., a medical corpus data repository) and strict and conditional treatment data; (iii) receiving criteria to answer the question to the QA system; and (iv) additional descriptions and use of the strict and conditional treatment data and criteria for answering the question. More particularly, the additional limitations of a QA system, as recited and applied in the claims, are not a particular machine sufficient to confer patent eligibility to the judicial exception. At the outset, we note that whether a judicial exception is performed by a particular machine may be a clue of patent eligibility, but it is not a stand-alone test. Bilski v. Kappos, 561 U.S. 593, 604 (2010); see also MPEP § 2106.05(b). Answering questions based upon conditional criteria via a question/answer system executing on a hardware processor is merely applying the judicial exception using a generic computing component. See Mayo, 566 U.S. at 72 (explaining that “to transform an unpatentable [judicial exception] into a patent-eligible application of [the judicial exception], one must do more than simply state the [judicial exception] while adding the words ‘apply it’”); see also Alice, 573 U.S. at 221; Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716-17 (Fed. Cir. 2014); MPEP § 2106.05(b). Further, the additional limitations related to the descriptions of the strict and conditional treatment data and criteria for answering the question are insufficient to confer patent eligibility. In addition, we do not find the claim is directed to an improvement to computer functionality or a technical field. “To be a patent-eligible improvement to computer functionality, we have required the claims to be directed to an improvement in the functionality of the computer or network Appeal 2021-002180 Application 14/861,090 12 platform itself.” Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359, 1363-64 (Fed. Cir. 2020). As discussed above, the claim is directed to providing a modified answer to a question related to a medical condition of a person when a mitigating (second) condition is identified. That is, the claim is not improving a QA system, but is merely using a QA system to perform the judicial exception. McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016) (“We . . . look to whether the claims in these patents focus on a specific means or method that improves the relevant technology or are instead directed to a result or effect that itself is the abstract idea and merely invoke generic processes and machinery.”) (citing Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016)); see also MPEP § 2106.05(a) (“the judicial exception alone cannot provide the improvement”). For at least the foregoing reasons, the claim does not integrate the judicial exception into a practical application. Because we determine the claim is directed to an abstract idea, we analyze the claim under step two of Alice (i.e., step 2B of the Office Guidance) to determine if there are additional limitations that individually, or as an ordered combination, ensure the claims amount to “significantly more” than the abstract idea. Alice, 573 U.S. at 217-18 (citing Mayo, 566 U.S. at 77-79). As stated in the Office Guidance, many of the considerations to determine whether the claims amount to “significantly more” under step two of the Alice framework are already considered as part of determining whether the judicial exception has been integrated into a practical application. MPEP § 2106.04(d)(I). Thus, at this point of our analysis, we determine if the claim adds a specific limitation, or combination Appeal 2021-002180 Application 14/861,090 13 of limitations, that is not well-understood, routine, conventional activity in the field, or simply appends well-understood, routine, conventional activities at a high level of generality. MPEP § 2106.05(II). “Whether something is well-understood, routine, and conventional to a skilled artisan at the time of the patent is a factual determination.” Berkheimer, 881 F.3d at 1369. Here, Appellant’s claim does not recite specific limitations (alone or when considered as an ordered combination) that are not well understood, routine, and conventional. Rather, the Specification describes the computer (i.e., information processing) system at a high level of generality. See Spec. ¶¶ 33-38. In addition, the Specification describes that devices that use the QA (question/answer) system may be such well-known devices as personal digital assistants, personal entertainment devices, tablets, and laptop computers. Spec. ¶ 32. See also Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324-25 (Fed. Cir. 2016) (generic computer components, such as an “interface,” “network,” and “database,” fail to satisfy the inventive concept requirement); Alice, 573 U.S. at 226 (“Nearly every computer will include a ‘communications controller’ and [a] ‘data storage unit’ capable of performing the basic calculation, storage, and transmission functions required by the method claims.”); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (“That a computer receives and sends the information over a network-with no further specification-is not even arguably inventive.”). For the reasons discussed supra, we are unpersuaded of Examiner error. Accordingly, we sustain the Examiner’s rejection of claims 1-8 under 35 U.S.C. § 101. See also 37 C.F.R. § 41.37(c)(1)(iv). Appeal 2021-002180 Application 14/861,090 14 Rejection under 35 U.S.C. § 103 Appellant broadly asserts the pending claims are allowable over the combined teachings of McIlroy, Byron, and Hussam. Appeal Br. 4-6. With respect to the limitation of “answering the question with a modification of the first condition via the criteria conditional override system,” Appellant states that the cited portions of Hussam describe scoring rules that may be applied to a patient’s response to certain questions and which generate alerts if a patient’s answer exceeds a threshold value. Appeal Br. 5. Appellant argues the instant claims are “patentably distinct” from how threshold is used in Hussam’s scoring system. Appeal Br. 5. As an initial matter, it is well settled that mere attorney arguments and conclusory statements, which are unsupported by factual evidence, are entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (attorney argument is not evidence); In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (explaining that 37 C.F.R. § 41.37 requires applicants to articulate substantive arguments). Further, Appellant’s conclusory statement (see Appeal Br. 5) that the instant claims are “patentably distinct” from the cited art fails to apprise us of Examiner error. For the reasons discussed supra, we are unpersuaded of Examiner error. Accordingly, we sustain the Examiner’s rejection of independent claim 1. For similar reasons, we sustain the Examiner’s rejection of claims 2-8, which depend directly or indirectly therefrom and were not argues separately. See Appeal Br. 6; see also 37 C.F.R. § 41.37(c)(1)(iv). Appeal 2021-002180 Application 14/861,090 15 CONCLUSION We affirm the Examiner’s decision rejecting claims 1-8 under 35 U.S.C. § 101. We affirm the Examiner’s decision rejecting claims 1-8 under 35 U.S.C. § 103. DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-8 101 Patent eligibility 1-8 1-8 103 McIlroy, Byron, Hussam 1-8 Overall Outcome 1-8 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)(1)(iv). See 37 C.F.R. § 41.50(f). AFFIRMED