Ex Parte Rock et al

Patent Trial and Appeal Board

Sep 26, 2018

14004682 (P.T.A.B. Sep. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/004,682 09/12/2013 Joseph Ernest Rock
24737 7590 09/28/2018
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.
2011P00041WOUS 1119
EXAMINER
HEIN, DEVIN C
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
09/28/2018 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 JOSEPH ERNEST ROCK, MARIANA NIKOLOV A-SIMONS,
and AMY OI MEE CHEUNG
Appeal2017---007315
Application 14/004,682 1
Technology Center 3600
Before ERIC B. CHEN, MATTHEW R. CLEMENTS, and
SCOTT E. BAIN, Administrative Patent Judges.
CHEN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1, 3---6, 9-12, 14--16, and 19-21. Claims 2, 7, 8,
13, 17, and 18 have been cancelled. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify the real party in interest as "Koninklijke Philips N.V."
(App. Br. 2.)
Appeal2017---007315
Application 14/004,682
THE INVENTION
Appellants' invention relates to identifying context attributes and
generating a context-based list of tasks for a user with respect to identified
context attributes. (Abstract.)
Claim 1 is exemplary, with disputed limitations in italics:
1. A method, comprising:
[i] generating a master list of tasks with respect to at least
one of clinical guidelines and patient data;
[ii] identifying context attributes, wherein the context
attributes describe a context for a user interaction with a system
for generating tasks, wherein the context attributes include a
time of day;
[iii] generating a context-based list of tasks from the
master list for a user with respect to the identified context
attributes;
[iv] receiving a user selection of a task from the context-
based list of tasks; and
[ v] filtering all monitoring and clinical data available for
a patient to produce only the relevant monitoring and clinical
data for the patient that is necessary to support user clinical
decisions for completing the user-selected task.
Claims 1, 3---6, 9-12, 14--16, and 19-21 stand rejected under 35 U.S.C.
§ 101 as directed to patent-ineligible subject matter. (Final Act. 2---6.)
Claims 1, 3-6, 11, 12, 14--16, 20, and 21 stand rejected under
35 U.S.C. § I03(a) as unpatentable over Scherpbier (US 2008/0164998 Al;
July 10, 2008), Gajic (US 2010/0198622 Al; Aug. 5, 2010), and Brandt
(US 2003/0045958 Al; Mar. 6, 2003). (Final Act. 6-10.)
2
Appeal2017---007315
Application 14/004,682
Claims 9, 10, and 19 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Scherpbier, Gajic, Brandt, and Wang (US 2004/0261063
Al; Dec. 23, 2004). (Final Act. 11-12.)
ANALYSIS
§ 1 OJ Rejection
We are unpersuaded by Appellants' arguments (App. Br. 4--14; see
also Reply Br. 2-5) that independent claims 1, 12, and 21 are directed to
patent-eligible subject matter under 35 U.S.C. § 101.
The Examiner found claim 1 is directed to "an abstract idea ... [ of]
generating and utilizing a master list of tasks to determine tasks to perform
based on contextual information and identifying information relevant to
performing one of the tasks." (Final Act. 3 (emphasis omitted).) In
particular, the Examiner found that:
The identified abstract idea is similar to collecting information,
analyzing it, and displaying certain results of the collection and
analysis, such as collection patient data, clinical guidelines,
context attributes, a user selection of a task, and monitoring and
clinical data, and analyzing it to generate or display a master list
of tasks, a context-based list of tasks and relevant monitoring and
clinical data with respect to the selected task, which has been
found by the courts to be an abstract idea in Electric Power
Group.
(Ans. 3 (emphasis omitted).) The Examiner further found "the additional
elements or combination of elements in the claims ... amount to no more
than a recitation of ... [g]eneric computer structure that serves to perform
generic computer functions that serve to merely link the abstract idea to a
particular technological environment" with a citation to Appellants'
3
Appeal2017---007315
Application 14/004,682
Specification (Final Act. 4). We agree with the Examiner's findings
and ultimate conclusion that claim 1 is patent-ineligible.
A patent may be obtained for "any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof." 35 U.S.C. § 101. The Supreme Court has held that this "provision
contains an important implicit exception: [l]aws of nature, natural
phenomena, and abstract ideas are not patentable." Alice Corp. Pty. Ltd. v.
CLS Bank Int'!, 134 S. Ct. 2347, 2354 (2014); Gottschalkv. Benson, 409
U.S. 63, 67 (1972) ("Phenomena of nature, though just discovered, mental
processes, and abstract intellectual concepts are not patentable, as they are
the basic tools of scientific and technological work."). Notwithstanding that
a law of nature or an abstract idea, by itself, is not patentable, the application
of these concepts may be deserving of patent protection. Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71-72 (2012).
In Mayo, the Court stated that "to transform an unpatentable law of nature
into a patent-eligible application of such a law, one must do more than
simply state the law of nature while adding the words 'apply it."' Mayo,
566 U.S. at 72 (internal citation omitted).
In Alice, the Supreme Court reaffirmed the framework set forth
previously in Mayo "for distinguishing patents that claim laws of nature,
natural phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts." Alice, 134 S. Ct. at 2355. The first step in
the analysis is to "determine whether the claims at issue are directed to one
of those patent-ineligible concepts." Id.
4
Appeal2017---007315
Application 14/004,682
If the claims are directed to a patent-ineligible concept, then the
second step in the analysis is to consider the elements of the
claims "individually and 'as an ordered combination'" to determine whether
the additional elements "'transform the nature of the claim' into a
patent-eligible application." Id. (quoting Mayo, 566 U.S. at 79, 78). In
other words, the second step is to "search for an 'inventive concept'-i.e., 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."' Id. (brackets in original) ( quoting Mayo, 566
U.S. at 72-73). "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. at 2357 (brackets in
original) (quoting Mayo, 566 U.S. at 77-78). The prohibition against
patenting an abstract idea "cannot be circumvented by attempting to limit the
use of the formula to a particular technological environment or adding
insignificant post-solution activity." Bilski v. Kappas, 561 U.S. 593, 610-11
(2010) (internal citation and quotation marks omitted). The Court in Alice
noted that "' [ s ]imply appending conventional steps, specified at a high level
of generality,' was not 'enough' [in Mayo] to supply an 'inventive
concept."' Alice, 134 S. Ct. at 2357 ( quoting Mayo, 566 U.S. at 82-83, 77-
78, 72-73).
Alice Step One: Are the claims at issue
directed to a patent-ineligible concept?
Independent claim 1 is a method claim, which recites, in part, the
following: "[i] generating a master list of tasks ... " and "[ii] identifying
5
Appeal2017---007315
Application 14/004,682
context attributes .... " Such method steps of claim 1 are directed to a
patent-ineligible abstract idea of collecting data. See, e.g., Elec. Power Grp.
v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) ("collecting
information, including when limited to particular content ( which does not
change its character as information), as within the realm of abstract ideas.")
Independent claim 1 further recites: "[iii] generating a context-based
list of tasks from the master list ... ," "[iv] receiving a user selection of a
task from the context-based list of tasks," and "[ v] filtering all monitoring
and clinical data available." Such method steps of claim 1 are directed to a
patent-ineligible abstract idea of analyzing and displaying information. See,
e.g., Elec. Power Grp., 830 F.3d at 1354 ("[t]he advance they purport to
make is a process of gathering and analyzing information of a specified
content, then displaying the results, and not any particular assertedly
inventive technology for performing those functions.").
Claim 12, a corresponding device claim, and claim 21, a
corresponding computer-readable medium claim, recite limitations similar to
those discussed with respect claim 1. Thus, claims 12 and 21 are also
directed to a patent-ineligible abstract idea.
Appellants argue that "[t]he Examiner has failed to 'identify the
judicial exception by referring to what is recited ... in the claim and explain
why it is considered an exception,' as well as 'explain why [the purported
abstract idea] corresponds to a concept that the courts have identified as an
abstract idea."' (App. Br. 6 (alternations in original).) Similarly, Appellants
argue that "the Examiner is describing the claims at issue here in an overly
high level of abstraction and overgeneralizing them." (App. Br. 10.)
6
Appeal2017---007315
Application 14/004,682
Contrary to Appellants' arguments, the Examiner has identified the
appropriate judicial exceptions as "collecting information, analyzing it, and
displaying certain results of the collection and analysis" and the Examiner
has compared the claimed concepts of independent claim 1 to an appropriate
Federal Circuit decision (i.e., Elec. Power Grp.).
Appellants further argue that "[t]his invention seeks to improve on
conventional approaches by introducing 'context attributes' to assist a
processor in providing more relevant and accurate tasks for use in the field
of decision support systems" and "[ s ]imilar to Enfish, these advantages are
not just an economical improvement, but are instead a technological
improvement." (App. Br. 9.) However, other than providing a conclusory
statement that the "invention seeks to improve on conventional approaches
by introducing 'context attributes' to assist a processor," Appellants have not
provided any additional explanation or evidence to support this position.
For example, Appellants have not provided citations to the Specification to
demonstrate that the claimed invention is an improvement of an existing
technology or demonstrated a deficiency in the prior art. See Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1337 (Fed. Cir. 2016) ("[O]ur conclusion
that the claims are directed to an improvement of an existing technology is
bolstered by the specification's teachings that the claimed invention achieves
other benefits over conventional databases, such as increased flexibility,
faster search times, and smaller memory requirements").
7
Appeal2017---007315
Application 14/004,682
Step Two: Is there something else in the claims
that ensures that they are directed to significantly
more than a patent ineligible concept?
Because claims 1, 12, and 21 are directed to an abstract idea, we next
determine, according to Alice, whether these claims recite an element, or
combination of elements, that is enough to ensure that the claim is directed
to significantly more than an abstract idea.
Claim 1, a method claim, does not recite any hardware elements.
However, claim 12, a corresponding device claim, recites "a memory," "a
processor," and "a user interface." Similarly, claim 21, a corresponding
computer-readable medium claim, recites "a processor." With respect to the
claimed hardware components, Appellants' Specification discloses the
following:
The host device 102, as shown in Fig. 2, is a server comprising a
processor 114 capable of processing patient data and clinical
guidelines stored in an information storage 116 (e.g., a memory)
to provide a user ( e.g., physician, nurse, discharge planner,
administrator) with a context-based list of tasks specific to the
user's role, time, location and device, and information relevant
to the completion of that task.
(Spec. 3:20-27.)
The user devices 104--110 include a user interface for displaying
the processed information to the user and permitting the user to
input information to the host device 102. For example, the user
interface may be a graphical user interface displayed to the user
on a display and permitting information to be entered via an input
device. The user devices 104--110 may be, for example, PCs,
laptops, PDAs, smartphones, tablets, etc.
(Spec. 3:29 to 4:4.)
8
Appeal2017---007315
Application 14/004,682
The generalized functional terms by which the computer components
are described reasonably indicate that Appellants' Specification discloses:
(i) conventional processor 114; (ii) conventional information storage 116
(e.g., a memory); and (iii) conventional user devices 104--110 (e.g., PCs,
laptops, PDAs, smartphones, tablets) having conventional interfaces (e.g.,
graphical user interface). In view of Appellants' Specification, the claimed
hardware components, including the "memory," "processor," and "user
interface" reasonably may be determined to be generic, purely conventional
computer elements. Thus, the claims do no more than require generic
computer elements to perform an abstract idea, rather than improve
computer capabilities. However, appending a conventional "memory,"
"processor," and "user interface" to an abstract idea is not enough to
transform the abstract idea into a patent-eligible invention. See Alice, 134 S.
Ct. at 2358 ("[T]he mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention").
Appellants argue that "the Examiner has failed to 'identify any
additional elements (specifically point to and claim
features/limitations/steps) recited in the claim beyond the identified judicial
exception"' and "Examiner has failed to 'explain the reasons that the
additional elements taken individually, and also taken as a combination, do
not result in the claim as a whole amounting to significantly more than the
judicial exception."' (App. Br. 7.) Contrary to Appellants' arguments, the
Examiner determined that the claims recite "[g]eneric computer structure
that serves to perform generic computer functions." (Ans. 3.) Moreover, as
discussed previously, Appellants' Specification provides sufficient basis to
9
Appeal2017---007315
Application 14/004,682
support the conclusion that claims 1, 12, and 21 do not recite significantly
more than the abstract idea.
Appellants also argue that
claim 1 specifies the variables used, (e.g., the patient data) and
how hey are selected, ( e.g., the context attributes), how the
process uses the variable in the clinical decision support system
( e.g., generating a context-based list of tasks), and the result is
employed to improve operations of the technology ( e.g., to
produce only the relevant monitoring and clinical data).
(App. Br. 12-13.) Similarly, Appellants argue that "[t]hese limitations [in
claim 1] demonstrate an improvement in the field of clinical decision
support systems and amount to more than simple instructions to perform the
steps of comparing new and stored information in isolation." (Id. at 13.)
However, Appellants have not adequately explained why claim 1 "purport[ s]
to improve the functioning of the computer itself' or "any other technology
or technical field." Alice, 134 S. Ct. at 2359. In particular, Appellants have
not explained why the limitations of claim 1, which are merely the
collection, analysis and display of information, improves the function of a
computer or other technology.
Finally, Appellants argue that "[t]he method of claim 1 utilizes ...
rules to automate and improve a process that was once performed on a more
general scale without the aid of computers, similar to McRO." (Reply Br. 4--
5.) However, other than providing a general conclusory statement that the
limitations of claim 1 are "similar to McRO," Appellants have not
adequately explained how this case pertains to the claimed invention.
10
Appeal2017---007315
Application 14/004,682
Thus, we agree with the Examiner that claims 1, 12, and 21 are
directed towards patent-ineligible subject matter. Accordingly, we sustain
the rejection of independent claims 1, 12, and 21 under 35 U.S.C. § 101.
Claims 2, 3---6, 9-11, 14--16, 19, and 20 depend from independent
claims 1, 12, and 21. We sustain the rejection of claims 2, 3---6, 9-11, 14--
16, 19, and 20 under 35 U.S.C. § 101 for the same reasons discussed with
respect to independent claims 1, 12, and 21.
§ 103 Rejection---Scherpbier, Gajic, and Brandt
We are unpersuaded by Appellants' arguments (App. Br. 15-18; see
also Reply Br. 6-7) that the combination of Scherpbier, Gajic, and Brandt
would not have rendered obvious independent claim 1, which includes the
limitations "wherein the context attributes include a time of day" and
"generating a context-based list of tasks from the master list for a user with
respect to the identified context attributes."
The Examiner found that the workflow processor of Scherpbier,
which also calculates time conflicts for performing tasks based on the
location of the worker and location of a placed order, corresponds to the
limitations "wherein the context attributes include a time of day" and
"generating a context-based list of tasks from the master list for a user with
respect to the identified context attributes." (Final Act. 7; see also Ans. 9.)
We agree with the Examiner's findings.
Scherpbier relates to a "personnel and device location sensitive
system for managing healthcare worker tasks, involving monitoring
healthcare worker, patient and equipment location." (i12.) In particular,
11
Appeal2017---007315
Application 14/004,682
Figure 1 of Scherpbier illustrates personnel and device location sensitive
system 10 for managing healthcare worker tasks, including W orkflow
processor 29 and "[a] worklist ... for individual healthcare workers,
showing tasks the individual workers are scheduled to perform, for which
patients and at what time." (i1 19.)
Moreover, Scherpbier provides the following example:
W orkflow processor 29 calculates the time to move the
equipment from a present location to the location of the placed
order and automatically assigns the order to the most suitable
combination of location and technician skill level conforming to
constraints and requirements of the placed order. If workflow
processor 29 determines there is a time conflict because the
portable ultrasound machine had been previously assigned for
use to fulfill a second order, the second order is reassigned to the
next best combination of machine and technician.
(i133 (emphasis added).) Because Scherpbier explains that workflow
processor 29 determines time conflicts ( e.g., the time to move equipment
from the present location to a new location) when assigning tasks to
individual workers, Scherpbier teaches the limitations "wherein the context
attributes include a time of day" and "generating a context-based list of tasks
from the master list for a user with respect to the identified context
attributes."
Appellants argue that "the system in Scherpbier does not factor in a
'time of day' [as recited in claim 1] to provide context for the tasks when the
tasks are being generated" but "[i]nstead, after the worklist is generated
based on the location information, the tasks are assigned a time to be
executed." (App. Br. 16; see also Reply Br. 6-7.) Contrary to Appellants'
arguments, in one example, Scherpbier explains "[i]f workflow processor 29
12
Appeal2017---007315
Application 14/004,682
determines there is a time conflict because the portable ultrasound machine
had been previously assigned for use to fulfill a second order, the second
order is reassigned to the next best combination of machine and technician."
(i133.) Accordingly, Scherpbier factors in the "time of day" as claimed
when assigning technicians to worker tasks.
Thus, we agree with the Examiner that the combination of Scherpbier,
Gajic, and Brandt would have rendered obvious independent claim 1, which
includes the limitations "wherein the context attributes include a time of
day" and "generating a context-based list of tasks from the master list for a
user with respect to the identified context attributes."
Accordingly, we sustain the rejection of independent claim 1 under 35
U.S.C. § 103(a). Claims 3-6 and 11 depend from claim 1, and Appellants
have not presented any additional substantive arguments with respect to
these claims. Therefore, we sustain the rejection of claims 3-6 and 11 under
35 U.S.C. § 103(a), for the same reasons discussed with respect to
independent claim 1.
Independent claims 12 and 21 recite limitations similar to those
discussed with respect to independent claim 1, and Appellants have not
presented any additional substantive arguments with respect to these claims.
We sustain the rejection of claims 12 and 21, as well as dependent claims
14--16 and 20, for the same reasons discussed with respect to claim 1.
§ 103 Rejection---Scherpbier, Gajic, Brandt, and Wang
Although Appellants nominally argue the rejection of dependent
claims 9, 10, and 19 separately (App. Br. 19), the arguments presented do
13
Appeal2017---007315
Application 14/004,682
not point out with particularity or explain why the limitations of these
dependent claims are separately patentable. Instead, Appellants merely
argue "that Wang fails to cure the deficiencies of Scherpbier in view of
Gajic and Brandt and that Scherpbier, Gajic, Brandt, and Wang." (Id.) We
are not persuaded by these arguments for the reasons discussed with respect
to claims 1 and 12, from which claims 9, 10, and 19 depend. Accordingly,
we sustain this rejection.
DECISION
The Examiner's decision rejecting claims 1, 3---6, 9-12, 14--16, and
19-21 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
14