KONINKLIJKE PHILIPS N.V.

Patent Trials and Appeals Board

Apr 30, 2021

2020001366 (P.T.A.B. Apr. 30, 2021)

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.
15/770,515 04/24/2018 Gabriel Ryan Mankovich 2015P00998WOUS 1021
24737 7590 04/30/2021
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus Avenue
Suite 340
Valhalla, NY 10595
EXAMINER
MERCADO VARGAS, ARIEL
ART UNIT PAPER NUMBER
2176
NOTIFICATION DATE DELIVERY MODE
04/30/2021 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):
katelyn.mulroy@philips.com
marianne.fox@philips.com
patti.demichele@Philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_____________

Ex parte GABRIEL RYAN MANKOVICH,
ROBBERT CHRISTIAAN VAN OMMERING, and
LUCAS DE MELO OLIVEIRA
_____________

Appeal 2020-001366
Application 15/770,515
Technology Center 2100
______________

Before ROBERT E. NAPPI, ST. JOHN COURTENAY, III, and
ERIC S. FRAHM, Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1, 2, and 4–17. Claim 3 has been canceled

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. “The word ‘applicant’ when used in this title refers to the
inventor or all of the joint inventors, or to the person applying for a patent as
provided in §§ 1.43, 1.45, or 1.46.” 37 C.F.R. § 1.42(a). Appellant
identifies the real party in interest as Koninklijke Philips N.V. (Appeal Br.
2).
Appeal 2020-001366
Application 15/770,515
2

(Appeal Br. 2, 19). We have jurisdiction under 35 U.S.C. § 6(b). We
reverse.
Introduction
Appellant’s Disclosed and Claimed Invention
Appellant’s disclosed invention “relates to the field of medical
information systems, and in particular to a system and method that uses user
feedback to identify pertinent words or phrases for efficient and effective
data extraction from text documents” (see Spec. 1:2–4). More specifically,
Appellant has recognized the need, in the medical diagnosis and treatment
environment, for medical practitioners to (i) identify medical record
information in a medical record that is in free-form text and pertinent to that
practitioner’s specialty field (see Spec. ¶ 1:16–24); and (ii) save time in
finding such pertinent information (see Spec. 2:1–4), by displaying only
pertinent terms (e.g., words and phrases) by allowing practitioners to define
such pertinent terms (see Spec. 2:5–26; see e.g., Figs. 1A–C). With this in
mind, Appellant discloses and claims methods and systems for allowing
practitioners to select pertinent terms and make “proposed modifications” to
add/remove selected pertinent terms to/from a vocabulary of pertinent terms
(claims 1, 7, 11).
Illustrative Claims
1. A non-transitory computer readable medium that
includes a program that, when executed by a processing system,
causes the processing system to:
receive a vocabulary of pertinent terms from a provider
that provides the vocabulary to a plurality of practitioners;
receive a request from a practitioner for a patient record;
process the patient record to identify pertinent terms in the
patient record based on the vocabulary of pertinent terms;
Appeal 2020-001366
Application 15/770,515
3

display the identified pertinent terms in the patient record
in a distinctive manner to the practitioner;
receive, from the practitioner, a selection of a displayed
pertinent term, and an identification of a proposed modification
to remove the selected pertinent term from the vocabulary of
pertinent terms;
[A] communicate the proposed modification of the
vocabulary to the provider of the vocabulary; and
subsequently receiving an updated vocabulary of pertinent
terms from the provider based on the proposed modification of
the vocabulary by the practitioner and also based on one or more
proposed modifications from the plurality of practitioners to add
a new term to the vocabulary of pertinent terms, and one or more
proposed modifications to remove an existing term from the
vocabulary of pertinent terms.
Appeal Br. 19, Claims Appendix (formatting, bracketed lettering, and
emphasis added).
7. A non-transitory computer readable medium that
includes a program that, when executed by a processing system,
causes the processing system to:
provide a vocabulary of pertinent terms to a plurality of
text annotation systems;
receive proposed modifications to the vocabulary of
pertinent terms from two or more of the plurality of text
annotation systems, wherein the proposed modifications include
modifications that add a term to the vocabulary and
modifications that remove a term from the vocabulary;
[B] assimilate the proposed modifications to the
vocabulary to determine whether an update to the vocabulary of
pertinent terms is warranted;
[C] updating the vocabulary of pertinent terms when the
update is determined to be warranted; and
providing the updated vocabulary of pertinent terms to one
or more of the pluralities of text annotation systems.
Appeal Br. 20, Claims Appendix (formatting, bracketed lettering, and
emphasis added). Remaining independent claim 11 recites features
commensurate in scope with claim 7, namely assimilating proposed
Appeal 2020-001366
Application 15/770,515
4

modifications and updating the vocabulary of pertinent terms when
warranted (see e.g., claim 7 limitations B and C).
Examiner’s Rejections
(1) The Examiner rejected claims 7–15 under 35 U.S.C. § 112(b) as
being indefinite for failing to particularly point out and distinctly claim the
subject matter which Appellant regards as the invention. Final Act. 3–4.
(2) The Examiner rejected claims 11–15 under 35 U.S.C. § 101 as
being directed to a judicial exception such as an abstract idea (e.g., software
per se), without significantly more (see Final Act. 4–5).
(3) The Examiner rejected claims 1, 2, 4–7, and 11–13 as being
anticipated under 35 U.S.C. § 102(a)(1) by Strongwater (US 2015/0046190
A1; published Feb. 12, 2015). Final Act. 5–21.
(4) The Examiner rejected claims 8–10 and 14–17 as being
unpatentable under 35 U.S.C. § 103 over Strongwater and Haijun Zhai, PhD
et al., Web 2.0-Based Crowdsourcing for High-Quality Gold Standard
Development in Clinical Natural Language Processing, JOURNAL OF
MEDICAL INTERNET RESEARCH, vol. 15, issue 4, pp. 1–17 (April 4, 2013)
(hereinafter, “Zhai”). Final Act. 21–28.
ISSUES
Based on Appellant’s arguments in the Appeal Brief (Appeal Br.
7–13) and the Reply Brief (Reply Br. 2–14), the following issues are
presented on appeal:
(1) Did the Examiner err in rejecting claims 7–15 under 35 U.S.C.
§ 112(b), for being indefinite?
Appeal 2020-001366
Application 15/770,515
5

(2) Did the Examiner err in rejecting claims 11–15 under
35 U.S.C. § 101 based on claim 11 being directed to non-statutory
subject matter (e.g., software per se)?
(3) Based on the Examiner’s improper interpretation of the claim term
“proposed modification” recited in claims 1, 7, and 11, did the
Examiner err in rejecting claims 1, 2, 4–7, and 11–13 under 35
U.S.C. § 102(a)(1) as being anticipated by Strongwater (and as a
result, also err in rejecting claims 8–10 and 14–17 depending from
respective ones of claims 1, 7, and 11 as being unpatentable under
35 U.S.C. § 103 over Strongwater combined with Zhai)?

ANALYSIS
Issue (1): Indefiniteness
With regard to claims 7–15, the Examiner finds limitations B and C
recited in claim 7, and the commensurate limitations recited in claim 11,
constitute conditional language and make the scope of claims 7–15
indefinite (see Final Act. 3; Ans. 8). The Examiner finds that determining
whether the proposed modification is warranted and updating the
vocabulary only if the proposed modification is warranted, renders the
claims indefinite (see Final Act. 3–4). The Examiner then states:
For purposes of the examination the examiner is
interpreting the claims as “assimilate the proposed modifications
to the vocabulary to determine ‘that’ an update to the vocabulary
of pertinent terms is warranted.”

Final Act. 3–4. In other words, the Examiner interprets claims 7 and 11 to
read out the term “whether” and replace “whether” with “that,” and thus
changes the meaning of the claims.
Appeal 2020-001366
Application 15/770,515
6

We are persuaded by Appellant’s arguments (Appeal Br. 9; Reply Br.
4–6) that the Examiner erred in concluding that claims 7–15 are indefinite
for failing to particularly point out and distinctly claim the subject matter
which Appellant regards as the invention.
A claim is indefinite when it contains words or phrases whose
meaning is unclear. In re Packard, 751 F.3d 1307, 1314 (Fed. Cir. 2014).
Under 35 U.S.C. § 112, second paragraph, the test for definiteness is
whether “those skilled in the art would understand what is claimed when the
claim is read in light of the specification.” Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986). Language in a
claim is unclear if, when given its broadest reasonable interpretation, it is
“ambiguous, vague, incoherent, opaque, or otherwise unclear in describing
and defining the claimed invention . . .” (In re Packard, 751 F.3d 1307, 1311
(Fed. Cir. 2014)). Because the language of 35 U.S.C. § 112(b) is
substantially the same as its predecessor, 35 U.S.C. § 112, second paragraph,
the same test for definiteness applies here. Breadth is not indefiniteness.
Here, the terms “determine whether” and “when the update is
determined to be warranted” (see e.g., claim 7, limitations B and C) have
sufficient meaning that one of ordinary skill in the art would understand
what these terms mean. We agree with Appellant that “[t]he function of the
phrase ‘determine whether’ is not ambiguous or uncertain” (Appeal Br. 9).
We also agree with Appellant’s contention that “‘[d]etermining whether’
provides a binary output: either the update is warranted, or the update is not
warranted,’” whereas the Examiner’s interpretation of “‘[d]etermining that’
provides a single output: the update is warranted’” (Appeal Br. 9). As a
result, Appellant’s contention that “the Examiner’s assertion that the word
Appeal 2020-001366
Application 15/770,515
7

‘whether’ in the phrase ‘determines whether’ renders the claims indefinite is
clearly erroneous” (Appeal Br. 9), is persuasive.
The Examiner also concludes that “the claim is silent regarding how a
proposed modification to the vocabulary is determined to be warranted or
not, the claim is silent regarding how the claim is performing such alleged
determination” (Ans. 8). However, we agree with Appellant “that the
particular criteria used to determine whether a proposed modification is
warranted is not a critical feature of the claim[s], and the absence of details
regarding how a proposed modification is determined to be warranted does
not render the claims indefinite under 35 U.S.C. 112(b)” (Reply Br. 5).
Finally, we agree with Appellant that the Specification provides
adequate support for the assimilation and updating steps set forth in claims 7
and 11 (see Reply Br. 5 citing Spec. 8:6–10:2). We conclude that “those
skilled in the art would understand what is claimed when the claim[s] [are]
read in light of the specification.” Orthokinetics, Inc. v. Safety Travel
Chairs, Inc., 806 F.2d at 1576. As a result, we do not sustain the
Examiner’s indefiniteness rejection of claims 7–15.
Issue (2): Eligibility of Statutory Subject Matter
The Examiner concludes that claims 11–15 are “directed to non-
statutory subject matter” (Final Act. 4) because “the present application fails
to expressly limit any of the recited components to a computer hardware
embodiment” (Final Act. 4). The Examiner concludes that claim 11 fails to
recite any statutory subject matter, and is instead limited to software
elements, or software per se (Final Act. 4). However, a “network of text
annotation systems comprising: a database” (claim 11) recites a database
which “must be located in some form of physical memory (hardware)”
Appeal 2020-001366
Application 15/770,515
8

because “absent the physical memory, there is nowhere to store the data”
(Appeal Br. 7). Appellant’s contention
that one of skill in the art would recognize that a database must
be stored in memory, a text annotation system must include
hardware that enables a user to view and annotate textual
information, and a knowledge module that receives, processes,
and provides information to and from text annotation systems
and to and from a database must be embodied in hardware that
physically transfers the electrons representing such information

(Reply Br. 3), is persuasive.
Therefore, we agree with Appellant (see Appeal Br. 7) that the
Examiner erred in rejecting claims 11–15 under 35 U.S.C. § 101 based on
claim 11 being directed to non-statutory subject matter (e.g., software per
se). Accordingly, we do not sustain the Examiner’s eligibility rejection of
claims 11–15 under 35 U.S.C. § 101.2
Issue (3): Anticipation and Obviousness
We have reviewed the Examiner’s obviousness rejections (Final Act.
5–28) in light of Appellant’s arguments (Appeal Br. 10–17; Reply Br. 6–14)
that the Examiner has erred, as well as the Examiner’s response to

2 We leave it to the Examiner in the event of further prosecution, including
any review prior to allowance, to consider a rejection under 35 U.S.C. § 101
in light of the Director’s 2019 Revised Guidance, as updated in the October
2019 Patent Eligibility Guidance Update, (found in the Ninth Edition,
Revision 10.2019 (revised June 2020) of the Manual of Patent Examination
Procedure (MPEP), and particularly within Sections 2103 through
2106.07(c)) for all claims 1, 2, and 4–17 on appeal. In particular, the
Examiner should consider whether claims 1, 7, and 11 recite abstract ideas,
such as the organization of human activity and mental processes. Although
the Board is authorized to reject claims under 37 C.F.R. § 41.50(b), no
inference should be drawn when the Board elects not to do so. See Manual
of Patent Examining Procedure (MPEP) § 1213.02.

Appeal 2020-001366
Application 15/770,515
9

Appellant’s arguments in the Briefs (Ans. 9–21). We concur with
Appellant’s contentions that the Examiner erred in finding (i) claims 1, 2, 4–
7, and 11–13 anticipated by Strongwater (Appeal Br. 10–17; Reply Br. 6–
13); and, as a result, (ii) claims 8–10 and 14–17 obvious over Strongwater in
view of Zhai (Appeal Br. 17; Reply Br. 13–14).
Strongwater displays medical reports with key terms highlighted (see
Fig. 4, step 404; ¶ 30), and receives instructions from a practitioner to
edit/change key terms and then updates a user profile (see Fig. 4, steps 412
and 414; ¶ 32). However, Strongwater always assimilates and updates the
received changes (see Strongwater ¶¶ 30–32, 48, 51). In this light,
Appellant’s contentions (as to claims 1, 7, and 11) that Strongwater fails to
disclose evaluating proposed modifications and whether the proposed
modifications should be applied to the vocabulary (see Appeal Br. 10–11;
Reply Br. 6–7), are persuasive.
As to claims 7 and 11, Appellant’s arguments that
Strongwater does not disclose assimilating proposed
modifications to the vocabulary from a plurality of text
annotation systems to determine whether an update to the
vocabulary of pertinent terms is warranted and updating the
vocabulary of pertinent terms when the update is determined to
be warranted, as claimed in independent claims 7 and 11

(Appeal Br. 16; Reply Br. 12) (emphasis omitted), are also persuasive.
Appellant’s arguments have persuaded us of error in the Examiner’s
rejections of claims 1, 2, and 4–17. Accordingly, we do not sustain the
Examiner’s anticipation and obviousness rejections of which rely on the
same base reference to Strongwater.

Appeal 2020-001366
Application 15/770,515
10

CONCLUSION
For all of the reasons above, we hold as follows:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
7–15 112(b) Indefiniteness 7–15
11–15 101 Eligibility 11–15
1, 2, 4–7,
11–13
102(a)(1) Strongwater 1, 2, 4–7,
11–13
8–10,
14–17
103 Strongwater, Zhai 8–10,
14–17
Overall
Outcome
1, 2, 4–17

REVERSED