Ex Parte Ribbing et al

Patent Trial and Appeal Board

Nov 28, 2018

13513428 (P.T.A.B. Nov. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/513,428 06/01/2012 Carolina Ribbing
24737 7590 11/30/2018
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus A venue
Suite 340
Valhalla, NY 10595
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2009P01059WOUS 9841
EXAMINER
NGUYEN, TRAN N
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
11/30/2018 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):
patti. demichele@Philips.com
marianne.fox@philips.com
katelyn.mulroy@philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CAROLINA RIBBING, MARTIN WEIBRECHT,
and
PETER K. BACHMANN
Appeal2017-010606
Application 13/513,428 1
Technology Center 3600
Before CARLA M. KRIVAK, HUNG H. BUI, and JON M. JURGOV AN,
Administrative Patent Judges.
BUI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) from the
Examiner's Final Rejection of claims 26-42, which are all the claims
pending in the application. We have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE. 2
1 According to Appellants, the real party in interest is Koninklijke Philips
Electronics N.V. App. Br. 2.
2 Our Decision refers to Appellants' Appeal Brief ("App. Br.") filed January
13, 2017; Examiner's Answer ("Ans.") mailed June 12, 2017; Reply Brief
("Reply Br.") filed August 7, 2017; Final Office Action ("Final Act.")
mailed August 26, 2016; and original Specification ("Spec.") filed June 1,
2012.
Appeal2017-010606
Application 13/513,428
STATEMENT OF THE CASE
Appellants' invention relates to a diagnostic method and apparatus
"for continuous storage and joint analysis of both image and non-image
medical data" by "multivariate analysis ... on a features vector generated
for a patient of interest to determine a proposed diagnosis for the patient."
Title ( capitalization altered); Abstract.
Claims 26, 33, and 38 are independent. Representative claim 26 is
reproduced below:
26. An apparatus comprising:
a database that is configured to store medical data of a
plurality of patients, the medical data of each patient including
medical image data and non-image medical data;
a multivariate analysis (MVA) engine that is configured
to:
receive a features vector that is a representation of
the patient in a multidimensional space in which the MV A
engine operates, and
provide at least one diagnosis based on the values
of the features vector;
a vector generator that is configured to:
receive the medical data of a patient of interest from
the database,
provide a feature value corresponding to each
feature of the features vector from the patient's medical
data, and
provide the features vector to the MV A engine to
obtain the at least one diagnosis; and
a user interface that is configured to provide the at least
one diagnosis to a user;
wherein:
the vector generator is configured to identify a feature for
which the medical data of the patient is insufficient to obtain a
missing feature value;
the apparatus includes a padding component that is
configured to provide a default value as the missing feature
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value, the default value being a value that is not expected to have
an effect on the diagnosis provided by the MV A engine; and
the padding component is configured to alert the user that
a default value cannot be provided when any default value for
the missing feature value is expected to change the diagnosis
provided by the MV A engine.
App. Br. (Claims App.) 15-20.
Examiner's Rejections
(1) Claims 26-32 stand rejected under 35 U.S.C. § 101 as being
directed to software per se, i.e., not falling within any of the four statutory
categories of patentable subject matter. Final Act. 2, 5.
(2) Claims 26-42 stand rejected under 35 U.S.C. § 101 as being
directed to an abstract idea without significantly more. Final Act. 2-11.
ANALYSIS
Rejection of claims 26-32 under 35 USC§ 101
as not falling within any statutory category
The Examiner rejected independent claim 26 as "not directed towards
at least one of the four statutory categories" because the broadest reasonable
interpretation of the claimed "apparatus comprising a 'database', an
'engine', a 'generator', a 'user interface', and a 'component"' encompasses
software per seas the claim does not recite "any hardware structure." Final
Act. 2; Ans. 2.
We do not agree with the Examiner's rejection. As Appellants
explain, the database and user interface in claim 26 are disclosed as being
implemented in hardware. App. Br. 7-8; Reply Br. 2-3. Specifically, the
claimed "database ... configured to store medical data of a plurality of
patients" includes a storage device, and the claimed "user interface that is
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configured to provide the at least one diagnosis to a user" and "alert the user
that a default value cannot be provided" is a physical device such as a
display or touch screen. See App. Br. (Claims App.) 15 (Claim 26); Reply
Br. 2-3 (citing Spec. 6:30, 7:27-30, Fig. 1); see also Spec. 7:8-12, 8:26,
10:26-28, 13:1. Thus, claim 26 is not directed to software per seas it
includes hardware components. Accordingly, we do not sustain the
Examiner's rejection of independent claim 26 and its dependent claims 27-
32 under 35 U.S.C. § 101 as directed to software per se.
Rejection of claims 26--42 under 35 USC§ 101 as directed to
a judicial exception without significantly more
In rejecting claims 26-42 under 35 U.S.C. § 101, the Examiner finds
the claims are directed to an abstract idea of "collecting patient data,
analyzing the patient data, and providing certain results of the collection and
analysis," which is similar to abstract ideas previously identified by the
courts. Ans. 4; Final Act. 4. Specifically, the Examiner finds the claims'
abstract idea is similar to "comparing new and stored information and using
rules to identify options," and "collecting information, analyzing it, and
displaying certain results of the collection and analysis (Electric Power
Group)." Final Act. 4; Ans. 3 (citing Electric Power Grp., LLC v. Alstom
S.A., 830 F.3d 1350 (Fed. Cir. 2016)).
Appellants argue independent claims 26, 33, and 38 are not directed to
the generic abstract idea asserted by the Examiner, but rather to a patent-
eligible automated medical diagnostic system "rooted in computer
technology, to provide a possible diagnosis" based on multivariate feature
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sets constructed from large, but incomplete collections of patient medical
records. App. Br. 11; Reply Br. 4---6.
To determine whether subject matter is patentable under§ 101, the
Supreme Court has set forth a two part test "for distinguishing patents that
claim laws of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts." Alice Corp. Pty. Ltd.
v. CLS Bankint'l, 134 S. Ct. 2347, 2355 (2014). The first step in the
analysis is to "determine whether the claims at issue are directed to one of
those patent-ineligible concepts," such as an abstract idea. Id. (citation
omitted). For computer-related technologies, "the first step in the Alice
inquiry ... asks whether the focus of the claims is on the specific asserted
improvement in computer capabilities" (which would be eligible subject
matter) or instead "on a process that qualifies as an 'abstract idea' for which
computers are invoked merely as a tool" (which would be ineligible subject
matter). Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36, 1338
(Fed. Cir. 2016) (emphasis added). "If the claims are not directed to an
abstract idea [or other patent-ineligible concept], the inquiry ends. If the
claims are 'directed to' an abstract idea, then the inquiry proceeds to the
second step of the Alice framework." McRO, Inc. v. Bandai Namco Games
Am. Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016).
The second step in the Alice framework is to consider the elements of
the claims "individually and 'as an ordered combination"' to determine
whether there are additional elements that "'transform the nature of the
claim' into a patent-eligible application." Id. (citing Mayo Collaborative
Services v. Prometheus Labs., Inc., 566 U.S. 66, 78 (2012)). In other words,
the second step is to "search for an 'inventive concept'-i.e., an element or
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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."' Id. (citing Mayo, 566 U.S. at 72-73).
Here, the Examiner has analogized the claims to Electric Power
Group. Ans. 3. However, the Examiner's reliance is misplaced because the
claims in Electric Power Group were merely "collecting and analyzing
information, without more"-such as "identifying a particular tool for
presentation" or using an "inventive set of components or methods, such as
measurement devices or techniques, that would generate new data." See
Electric Power Grp., 830 F.3d at 1354--55 (emphasis added).
The claims before us are different than those in Electric Power Grp.,
and we agree with Appellants, the claims "do not claim an abstract idea";
rather, the claims provide a solution to a technical problem of recognizing
medical conditions and establishing timely diagnoses from large,
incomplete, and constantly updating medical records. Reply Br. 4--6; App.
Br. 11. Particularly, we find the present claims are analogous to Enfzsh.
In Enfzsh, the Federal Circuit explained that the term "'directed to"'
under step one of the Alice framework, "applies a stage-one filter to claims,
considered in light of the specification, based on whether 'their character as
a whole is directed to excluded subject matter."' Enfzsh, 822 F.3d at 1335
(internal citation omitted). The Federal Circuit further explained that
improvements in computer-related technology are not inherently abstract,
and thus, it is "relevant to ask whether the claims are directed to an
improvement to computer functionality versus being directed to an abstract
idea, even at the first step of the Alice analysis." Id. Specifically, the
Federal Circuit differentiated between claims that focus on an improvement
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in computer capabilities and claims that focus on an abstract idea "for which
computers are invoked merely as a tool." Id. at 1336. In Enfzsh, the Federal
Circuit determined that the claimed self-referential database table was
directed to an improvement in the functioning of a computer and not "a
situation where general-purpose computer components are added post-hoc to
a fundamental economic practice or mathematical equation." Id. at 1339.
Thus, the court determined that the claims at issue were not directed to an
abstract idea and, therefore, the claims were patent eligible under 35 U.S.C.
§ 101. Id.
Here, the diagnostic system and methods of independent claims 26,
3 3, and 3 8 are directed to the creation of multivariate feature sets ("features
vectors") based on patients' medical records to enable a computer to provide
a diagnosis based on values in those features. Reply Br. 6; App. Br. 11; see
Spec. 4: 13-5:4, 10:31-11 :6. The multivariate feature sets each provide a
representation of a patient in a multidimensional space using feature values
that (i) correspond to the patient's medical data in the patient's medical
records or (ii) correspond to medical data missing ( and not obtainable) from
patient's existing medical records. See App. Br. (Claims App.) 15 (Claim
26). The feature values corresponding to missing patient information are
default values that enable the MVA-based diagnostic system to provide a
medical diagnosis in the presence of missing data, the default values not
otherwise expected to have an effect on the diagnosis provided by the MV A
engine. See App. Br. (Claims App.) 15 (Claim 26); see Spec. 11:19-12:2,
Figs. 2-3. That is, providing the claimed default values solves "a problem
that is specific to a computer's inability to properly execute a multi-variate
analysis without complete input information," thus enabling the MVA
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system to give timely diagnoses from incomplete and constantly updating
patient data. Reply Br. 6; see also App. Br. 11; Spec. 4:10-12, 7:5-8, 9:32-
10:10, 15:27-16:8. Appellants' claimed solution also determines when it is
appropriate to provide such default values, and "alert[ s] the user that a
default value cannot be provided when any default value for the missing
feature value is expected to change the diagnosis provided by the MV A
engine." See App. Br. (Claims App.) 15-20 (Claim 26); Spec. 12:31-13:5.
The claimed automated diagnostic system, therefore, identifies possible
diagnoses from large, incomplete, and constantly updating sets of medical
records, while also alerting the user (nurse, physician, etc.) when patient's
records are missing a "test result ... critical to the diagnosis, such that a
proposed diagnosis [by the MV A engine] should not be presented at all in
the absence of this critical diagnostic test." See Spec. 12:3-8, Fig. 4.
Given the discussion in the Specification regarding the improvements
to medical diagnostic systems resulting from the claimed multivariate
analysis on feature sets constructed from large, incomplete, and updating
medical records, claims 26, 33, and 38, as a whole, cannot be said to be
directed to an abstract idea, but to a solution rooted in computer technology
as the Appellants have argued. As the claims are not directed to an abstract
idea under the first step of the Alice analysis, we need not proceed to step
two of the analysis. See Enfzsh, 822 F.3d at 1336, 1339.
For these reasons, we do not sustain the Examiner's rejection of
claims 26, 33, and 38, and their dependent claims 27-32, 34--37, and 39--42
as directed to non-statutory subject matter under 35 U.S.C. § 101.
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CONCLUSION
On the record before us, we conclude Appellants have demonstrated
the Examiner erred in rejecting (i) claims 26-32 under 35 U.S.C. § 101 as
directed to software per se, and (ii) claims 26-42 under 35 U.S.C. § 101 as
directed to an abstract idea without significantly more.
DECISION
As such, we REVERSE the Examiner's final rejection of claims 26-
42 under 35 U.S.C. § 101.
REVERSED
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