International Business Machines Corporation

Patent Trials and Appeals Board

Mar 31, 2022

2021003112 (P.T.A.B. Mar. 31, 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. 16/120,658 09/04/2018 Ella Barkan IL820170042US01 9012 140143 7590 03/31/2022 IBM Corporation - Patent Center 1701 North Street B/256-3 Endicott, NY 13760 EXAMINER JACKSON, JORDAN L ART UNIT PAPER NUMBER 3626 NOTIFICATION DATE DELIVERY MODE 03/31/2022 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): rocdrctr@us.ibm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ELLA BARKAN, MURRAY A. REICHER, and EUGENIUSZ WALACH ____________ Appeal 2021-003112 Application 16/120,658 Technology Center 3600 ____________ Before MURRIEL E. CRAWFORD, BIBHU R. MOHANTY, and ROBERT J. SILVERMAN, Administrative Patent Judges. MOHANTY, 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 1-5, 10-14, and 19-28. We have jurisdiction under 35 U.S.C. § 6(b). SUMMARY OF THE DECISION We AFFIRM. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as International Business Machines Corporation. (Appeal Br. 2). Appeal 2021-003112 Application 16/120,658 2 CLAIMED SUBJECT MATTER The Appellants’ claimed invention relates to patient management and diagnostic decision-making support for healthcare practitioners (Spec., para. 1). Claim 1, reproduced below with the italics added, is representative of the subject matter on appeal. 1. A computer-implemented method comprising: receiving, by a clinical decision support system (CDSS) executed on a computer, a health history of a patient, the health history comprising a plurality of known diagnostic measures; generating, by the CDSS, a first vector storing a first plurality of probabilities corresponding to a plurality of medical conditions based on the health history of the patient, wherein each element of the first vector corresponds to a respective probability of a respective medical condition; generating, by the CDSS, a first list of potential diagnostic measures by removing the plurality of known diagnostic measures from a second list of all diagnostic measures; calculating, by the CDSS, respective values for respective diagnostic measures in the first list of potential diagnostic measures, wherein calculating respective values further comprises: selecting a first answer to a first diagnostic measure; calculating a second vector storing a second plurality of updated probabilities based on the first answer and the first plurality of probabilities; calculating a largest difference of any corresponding pair of probabilities between the first plurality of probabilities and the second plurality of updated probabilities; and associating the largest difference as a first value of the first diagnostic measure; calculating, by the CDSS, respective costs for respective diagnostic measures in the first list of potential diagnostic measures; Appeal 2021-003112 Application 16/120,658 3 calculating, by the CDSS, respective scores for respective diagnostic measures in the first list potential of diagnostic measures, wherein respective scores are based on respective values and respective costs; and outputting, by the CDSS and to a display of the computer, a recommended diagnostic measure having a highest score. THE REJECTION The following rejection is before us for review: Claims 1-5, 10-14, and 19-28 are rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter. FINDINGS OF FACT We have determined that the findings of fact in the Analysis section below are supported at least by a preponderance of the evidence.2 ANALYSIS Rejection under 35 U.S.C. § 101 The Appellant argues that the rejection of claim 1 is improper because the claim is directed to an improvement in computer technology (Appeal Br. 12-14; Reply Br. 2, 3). The Appellant argues that the claim integrates any judicial exception into a practical application (Appeal Br. 14). The Appellants argue further that the claim realizes improvement in the processing speed, memory, efficiency, and quantification flexibility relative to other clinical decision support systems rather than the required 2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Patent Office). Appeal 2021-003112 Application 16/120,658 4 calculations simply being performed more efficiently by a computer (Appeal Br. 14, 15; Reply Br. 6, 7). The Appellant also cites to Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1339, (Fed. Cir. 2016) as being indicative of the claim being patent eligible (Appeal Br. 15, 16, Reply Br. 7-10). In contrast, the Examiner has determined that the rejection of record is proper (Final Action 3-9; Ans. 3-7). We agree with the Examiner. 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). 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 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 Appeal 2021-003112 Application 16/120,658 5 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, 192 (1981)); “tanning, dyeing, making waterproof cloth, vulcanizing India rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267-68 (1853))); 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 187; 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 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.”). In January 2019, the USPTO published revised guidance on the application of § 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the 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 Appeal 2021-003112 Application 16/120,658 6 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, i.e., evaluate whether the claim “appl[ies], rel[ies] on, or use[s] the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.” (See Guidance, 84 Fed. Reg. at 54; see also MPEP § 2106.05(a)-(c), (e)- (h)). 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 is 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 Guidance. 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 (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. (alterations in original) (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. Appeal 2021-003112 Application 16/120,658 7 The Specification states that the invention generally relates to patient management and diagnostic decision-making support for healthcare practitioners (Spec., para. 1). Here, the Examiner has determined that the claim sets forth the concept of organizing or analyzing information in mental steps or a mathematical concept (Final Act. 4). We substantially agree with the Examiner. We determine that the claim sets forth the subject matter in italics above which describes the concept of [1] “receiving . . . a health history of a patient”; [2] “generating . . . a first vector storing a first plurality of probabilities corresponding to a plurality of medical conditions based on the health history of the patient”; [3] “generating . . . a first list of potential diagnostic measures by removing the plurality of known diagnostic measures from a second list of all diagnostic measures”; [4] “calculating, by . . . respective values for respective diagnostic measures in the first list of potential diagnostic measures, wherein calculating respective values further comprises”; [5] “selecting a first answer to a first diagnostic measure”; [6] “calculating a second vector storing a second plurality of updated probabilities based on the first answer and the first plurality of probabilities”; [6] “calculating a largest difference of any corresponding pair of probabilities between the first plurality of probabilities and the second plurality of updated probabilities”; [7] “associating the largest difference as a first value of the first diagnostic measure”; [8] “calculating, . . . respective costs for respective diagnostic measures in the first list of potential diagnostic measures”; [9] “calculating . . . respective scores for respective diagnostic measures in the first list potential of diagnostic measures, wherein respective scores are based on respective values and respective costs”; [10] “outputting . . . a recommended diagnostic measure having a highest score”; Appeal 2021-003112 Application 16/120,658 8 which set forth the concept of calculating the probabilities of the medical conditions based on the health history of the patient and calculating respective scores and costs for diagnostic measures and recommending diagnostic measure with the highest score which is a mathematical concept in determining diagnostic scores from data, certain or mental process in determining the best diagnostic process for a patient based on the patients health data and a list of potential diagnostic measures, i.e. a judicial exception. A method, like the claimed method, “a process that employs mathematical algorithms to manipulate existing information to generate additional information is not patent eligible.” See Digitech Image Techs, LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014). See also Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016) where collecting information, analyzing it, and displaying results from certain results of the collection and analysis was held to be an abstract idea. See also In re Meyer, 688 F.2d 789, 795-96 (CCPA 1982), which held that “a mental process that a neurologist should follow” when testing a patient for nervous system malfunctions was not patentable. We next determine whether the claim recites additional elements in the claim to integrate the judicial exception into a practical application. See Guidance, 84 Fed. Reg. at 54-55. The Revised Guidance references the MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”) §§ 2106.04(d) and 2106.05(a)-(c) and (e)-(h). Here, the claims do not improve computer functionality, improve another field of technology, utilize a particular machine, or effect a particular physical transformation. Rather, we determine that nothing in the Appeal 2021-003112 Application 16/120,658 9 claims imposes a meaningful limit on the judicial exception, such that the claims are more than a drafting effort to monopolize the judicial exception. For example, in the claim, the additional elements beyond the abstract idea are the recited computer and computer display. The claimed limitations of “receiving”, “generating”, “calculating”, “selecting”, “associating”, and “outputting” as recited “do not purport to improve the functioning of the computer itself,” do not improve the technology of the technical field, and do not require a “particular machine.” Rather, they are performed using generic computer components. Further, the claim as a whole fails to effect any particular transformation of an article to a different state. The recited steps in the claim fail to provide meaningful limitations to limit the judicial exception. In this case, the claim merely uses the claimed computer elements as a tool to perform the abstract idea. Considering the elements of the claim both individually and as “an ordered combination” the functions performed by the computer system at each step of the process are purely conventional. Each step of the claimed method does no more than require a generic computer to perform a generic computer function. Thus, the claimed elements have not been shown to integrate the judicial exception into a practical application as set forth in the Revised Guidance which references the MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”) §§ 2106.04(d) and 2106.05(a)-(c) and (e)-(h). Turning to the second step of the Alice and Mayo framework, we determine that the claim does not contain an inventive concept sufficient to “transform” the abstract nature of the claim into a patent-eligible application. Considering the claim both individually and as an ordered combination fails to add subject matter beyond the judicial exception that is not well- Appeal 2021-003112 Application 16/120,658 10 understood, routine, and conventional in the field. Rather the claim uses well-understood, routine, and conventional activities previously known in the art and they are recited at a high level of generality. The Specification at paras. 73, 74, and 80 for example describes using conventional computer components such as memory, storage, processors, and input/output devices in a conventional manner. The claim specifically includes recitations for computers to implement the method but these computer components are all used in a manner that is well-understood, routine, and conventional in the field. Here, the claimed generic computer components which are used to implement the claimed method are well understood, routine, or conventional in the field. Here, the claim has not been shown to be “significantly more” than the abstract idea. The Appellant at pages 15 and 16 of the Appeal Brief has also cited to Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) to show that the claim is not abstract, however, the claims in that case are not similar in scope to those here and were in contrast directed to a self-referential data table. For these above reasons the rejection of claim 1 is sustained. The Appellant has provided the same arguments for the remaining claims which are drawn to similar subject matter and the rejection of these claims is sustained for the same reasons given above. CONCLUSIONS OF LAW We conclude that Appellant has shown that the Examiner erred in rejecting claims 1-5, 10-14, and 19-28 under 35 U.S.C. § 101 as being directed to non-statutory subject matter. Appeal 2021-003112 Application 16/120,658 11 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-5, 10-14, 19-28 101 Eligibility 1-5, 10-14, 19-28 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