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Patent Trials and Appeals Board

Nov 13, 2019

14270436 - (D) (P.T.A.B. Nov. 13, 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.
14/270,436 05/06/2014 Vijay Parthasarathy 2011P02275US01 5431
24737 7590 11/13/2019
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus Avenue
Suite 340
Valhalla, NY 10595
EXAMINER
LE, LINH GIANG
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
11/13/2019 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 VIJAY PARTHASARATHY,
ALEXANDER ADRIANUS MARTINUS VERBEEK,
and YUECHEN QIAN

Appeal 2019-000955
Application 14/270,436
Technology Center 3600
Before JENNIFER L. MCKEOWN, BETH Z. SHAW, and
SCOTT E. BAIN, Administrative Patent Judges.
SHAW, 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, 3–11, 13–18, and 21–24. Final Act.
2. 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(a). Appellant identifies the real party in interest as
Koninklijke Philips N.V. Appeal Br. 1.
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Application 14/270,436

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CLAIMED SUBJECT MATTER
The claims are directed to a system and method for indicating the
quality of information to support clinical decision making. Claim 9,2
reproduced below, is illustrative of the claimed subject matter:
9. A system for indicating the quality of a medical report,
the system comprising:
one or more processors programmed to:
process a portion of a medical report in natural language
using a natural language processing engine;
generate a score of the medical report based on a
plurality of categories relating to the quality of the medical
report, the categories including of report content, report format,
and report trustworthiness; and
control a display device to display the generated score.
REJECTION
Claims 1, 3–11, 13–18, and 21–24 are rejected under 35 U.S.C. § 101.
Final Act. 2.
OPINION
Appellant argues the pending claims as a group. See Appeal Br. 7–16.
As permitted by 37 C.F.R. § 41.37, we decide the appeal based on claim 9.
See 37 C.F.R. § 41.37(c)(1)(iv) (2016).
Section 101 of the Patent Act provides that “any new and useful
process, machine, manufacture, or composition of matter, or any new and
useful improvement thereof” is patent eligible. 35 U.S.C. § 101. But the

2 We note that claim 1 appears to be missing a word within the phrase “a
medical report system configured to a medical report. . . .” Due to this
discrepancy and because Appellant argues the claims as a group (Appeal Br.
7–16), we select claim 9 as illustrative.
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Supreme Court has long recognized an implicit exception to this section:
“Laws of nature, natural phenomena, and abstract ideas are not patentable.”
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (quoting Ass’n for
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
To determine whether a claim falls within one of these excluded categories,
the Court has set out a two-part framework. The framework requires us first
to consider whether the claim is “directed to one of those patent-ineligible
concepts.” Alice, 573 U.S. at 217. If so, we then examine “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.” Alice, 573 U.S. at 217 (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78, 79 (2012)).
That is, we examine the claims for an “inventive concept,” “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.’” Alice, 573 U.S. at 217–18 (alteration in original) (quoting
Mayo, 566 U.S. at 72–73).
The Patent Office recently issued guidance about this framework. See
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (“2019 Eligibility Guidance”). Under the guidance, to decide
whether a claim is “directed to” an abstract idea, we evaluate whether the
claim (1) recites an abstract idea grouping listed in the guidance and (2) fails
to integrate the recited abstract idea into a practical application. See 2019
Eligibility Guidance, 84 Fed. Reg. at 51. If the claim is “directed to” an
abstract idea, as noted above, we then determine whether the claim recites an
inventive concept. The 2019 Eligibility Guidance explains that when
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making this determination, we should consider whether the additional claim
elements add “a specific limitation or combination of limitations that are not
well-understood, routine, conventional activity in the field” or “simply
append[] well-understood, routine, conventional activities previously known
to the industry.” 2019 Eligibility Guidance, 84 Fed. Reg. at 56.
With these principles in mind, we turn to the Examiner’s § 101
rejection.
Abstract idea
Turning to Step 2A, Prong 1, the claimed method is for indicating the
quality of a medical report. Spec. 2:21–22. Claim 9 includes “process[ing]
a portion of a medical report in natural language” and “generat[ing] a score
of the medical report based on a plurality of categories relating to the quality
of the medical report, the categories including of report content, report
format, and report trustworthiness.”
Claim 9 recites an abstract idea grouping listed in the 2019 Eligibility
Guidance: “mental processes.” See 2019 Eligibility Guidance, 84 Fed. Reg.
at 52, 53 (listing “[m]ental processes—concepts performed in the human
mind (including an observation, evaluation, judgment, opinion)” as one of
the “enumerated groupings of abstract ideas” (footnote omitted)). The
guidance explains that “mental processes” include acts that people can
perform in their minds or using pen and paper, even if the claim recites that
a generic computer component performs the acts. See 2019 Eligibility
Guidance, 84 Fed. Reg. at 52 n.14 (“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
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also 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.”), quoted in
2019 Eligibility Guidance, 84 Fed. Reg. at 52 n.14; Mortg. Grader, Inc. v.
First Choice Loan Servs. Inc., 811 F.3d. 1314, 1324 (Fed. Cir. 2016)
(holding that computer-implemented method for “‘anonymous loan
shopping’” was an abstract idea because it could be “‘performed by humans
without a computer’”); quoted in 2019 Eligibility Guidance, 84 Fed. Reg. at
52 n.14.
The method recited in claim 9 executes steps that people can perform
in their minds or using pen and paper. A person can perform the
“process[ing]” and “generat[ing]” steps of claim 9 by using his or her mind
(or pen and paper) in the claimed manner. For example, a person can
“process a portion of a medical report in natural language” using his or her
mind or pen and paper. A person can “generate a score of the medical report
based on a plurality of categories relating to the quality of the medical
report, the categories including of report content, report format, and report
trustworthiness,” using pen and paper. Accordingly, claim 9 recites a mental
process, and thus an abstract idea.
Turning to Step 2A, Prong 2, the remaining elements recited in claim 9 do
not integrate the abstract idea into a practical application. In addition to the
steps discussed above, claim 9 recites “one or more processors” and a
“display device to display the generated score.” The recited processors and
display device encompass generic components. See, e.g., Spec. 12:16–27
(“a processor includes one or more of a microprocessor, a microcontroller, a
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graphic processing unit (GPU), an application-specific integrated circuit
(ASIC), a field-programmable gate array (FPGA), and the like; . . . and a
display device includes one or more of a LCD display, an LED display, a
plasma display, a projection display, a touch screen display, and the like.”).
Simply programming a general-purpose computer “processor” to perform
abstract ideas does not integrate those ideas into a practical application. See
2019 Eligibility Guidance, 84 Fed. Reg. at 55 (identifying “merely
includ[ing] instructions to implement an abstract idea on a computer” as an
example of when an abstract idea has not been integrated into a practical
application).
In addition, “display the generated score” in claim 9’s last clause is
insignificant post-solution activity, because it is merely ancillary to the focus
of the claimed invention, namely, generating the score of the medical report
based on the plurality of categories, given the display’s high level of
generality and context in the claimed invention. Where, as here, the recited
display function is merely ancillary to the score generation focus of the
claimed invention, given its high level of generality and context in the
claimed invention, the recited display function is insignificant post-solution
activity and, therefore, does not integrate the exception into a practical
application for this additional reason. See 2019 Eligibility Guidance, 84
Fed. Reg. at 55 (citing MPEP § 2106.05(g)).
Thus, the claims do not integrate the judicial exception into a practical
application. The claims do not (1) improve the functioning of a computer or
other technology, (2) are not applied with any particular machine (except for
a generic computer), (3) do not effect a transformation of a particular article
to a different state, and (4) are not applied in any meaningful way beyond
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generally linking the use of the judicial exception to a particular
technological environment, such that the claim as a whole is more than a
drafting effort designed to monopolize the exception. See MPEP
§§ 2106.05(a)–(c), (e)–(h). We, therefore, agree with the Examiner that
claim 9 is directed to an abstract idea.

Inventive Concept
Because we determine claim 9 is “directed to” an abstract idea, we
consider whether claim 9 recites an “inventive concept” pursuant to Step 2B
of the 2019 Eligibility Guidance. The Examiner determined claim 9 does
not recite an inventive concept because the additional elements in the claim
do not amount to “significantly more” than an abstract idea. See Final Act.
5, 6.
We agree with the Examiner’s determination. As noted above, the
claimed invention merely uses generic computing components to implement
the recited abstract idea. The additional elements recited in the claim include
the “one or more processors” and “display device.” The claim recites these
elements at a high level of generality, and the written description indicates
that these elements are generic computer components. See, e.g., Spec.
12:16–27. Using generic computer components to perform abstract ideas
does not provide the necessary inventive concept. See Alice, 573 U.S. at 223
(“[T]he mere recitation of a generic computer cannot transform a patent-
ineligible abstract idea into a patent-eligible invention.”). Thus, these
elements, taken individually or together, do not amount to “significantly
more” than the abstract ideas themselves.
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Appellant contends various elements recited in the claim provide the
necessary inventive concept. Appeal Br. 13. But these elements form part
of the recited abstract ideas and thus are not “additional elements” that
“‘transform the nature of the claim’ into a patent-eligible application.”
Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S. at 78); see also 2019
Eligibility Guidance, 84 Fed. Reg. at 55 n.24 (“USPTO guidance uses the
term ‘additional elements’ to refer to claim features, limitations, and/or steps
that are recited in the claim beyond the identified judicial exception.”
(Emphasis added)).
Rather, the recited (1) one or more processors; and (2) display device
are the additional recited elements whose generic computing functionality is
well-understood, routine, and conventional. See Intellectual Ventures, 792
F.3d at 1368 (noting that a recited user profile (i.e., a profile keyed to a user
identity), database, and communication medium are generic computer
elements); Mortgage Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d
1314, 1324–25 (Fed. Cir. 2016) (noting that components such an “interface,”
“network,” and “database” are generic computer components that do not
satisfy the inventive concept requirement). Accord Final Act. 5, 6
(Concluding that the claims’ additional generic computer components do not
add significantly more than the abstract idea.). Appellant’s arguments do
not persuade us claim 9 is “directed to” a patent-eligible concept.
To the extent Appellant contends that the claimed invention is rooted
in technology because it is ostensibly directed to a technical solution (see
Appeal Br. 14), we disagree. Even assuming, without deciding, that the
claimed invention can indicate a quality of a medical report faster than doing
so manually, any speed increase comes from the capabilities of the generic
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computer components—not the recited process itself. See FairWarning IP,
LLC v. Iatric Systems, Inc., 839 F.3d 1089, 1095 (Fed. Cir. 2016) (citing
Bancorp Services, LLC v. Sun Life Assurance Co., 687 F.3d 1266, 1278
(Fed. Cir. 2012) (“[T]he fact that the required calculations could be
performed more efficiently via a computer does not materially alter the
patent eligibility of the claimed subject matter.”)); see also Intellectual
Ventures I LLC v. Erie Indemnity Co., 711 F. App’x 1012, 1017 (Fed. Cir.
2017) (unpublished) (“Though the claims purport to accelerate the process
of finding errant files and to reduce error, we have held that speed and
accuracy increases stemming from the ordinary capabilities of a general-
purpose computer ‘do[ ] not materially alter the patent eligibility of the
claimed subject matter.’”). Like the claims in FairWarning, the focus of
claim 9 is not on an improvement in computer processors as tools, but on
certain independently abstract ideas that use generic computing components
as tools. See FairWarning, 839 F.3d at 1095 (citations and quotation marks
omitted).

Conclusion
For at least the above reasons, we agree with the Examiner that claim
9 is “directed to” an abstract idea and does not recite an “inventive concept.”
Accordingly, we sustain the Examiner’s rejection of the pending claims
under 35 U.S.C. § 101.

DECISION
The Examiner’s rejection is affirmed.
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DECISION SUMMARY
Claims
Rejected
Basis Affirmed Reversed
# 1, 3–11,
13–18 and
21–24
§ 101 # 1, 3–11,
13–18 and
21–24

FINALITY AND 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