Michael Chun-Chieh. Lee et al.

Patent Trials and Appeals Board

Nov 1, 2019

14220418 - (D) (P.T.A.B. Nov. 1, 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.
14/220,418 03/20/2014 Michael Chun-chieh Lee 2012P00774US01 3357
24737 7590 11/01/2019
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus Avenue
Suite 340
Valhalla, NY 10595
EXAMINER
HEIN, DEVIN C
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
11/01/2019 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 MICHAEL CHUN-CHIEH LEE, YUECHEN QIAN,
and JAMES CHI-KUEI SHAW
________________

Appeal 2018-003851
Application 14/220,418
Technology Center 3600
________________

Before ST. JOHN COURTENAY III, JOHN P. PINKERTON, and
JASON J. CHUNG, Administrative Patent Judges.

CHUNG, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals the Final Rejection
of claims 1–28. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
INVENTION
The invention relates to identifying relevant imaging examination
recommendations for a patient from prior medical reports of the patient to
facilitate determining a follow-up imaging examination(s) for the patient.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. According to Appellant, Koninklijke Philips N.V.,
Eindhoven, NL is the real party in interest. Appeal Br. 2.
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Spec. 1:1–3. Claim 1 is illustrative of the invention and is reproduced
below:
1. A method for identifying relevant follow-up
recommendations from medical reports, comprising:
obtaining, in electronic format, an imaging examination
order for a follow-up imaging examination of a patient, wherein
the imaging examination order includes an imaging modality for
the follow-up imaging examination of the patient, wherein the
imaging modality includes at least one from a group comprising
of computed tomography (CT), magnetic resonance (MR),
positron emission tomography (PET), single photon emission
computed tomography (SPECT), ultrasound (US) and X-ray;
identifying, with a processor, follow-up recommendations
in electronically formatted prior medical reports;
filtering the identified follow-up recommendations in
electronically formatted prior medical reports according to the
imaging modality of the imaging examination order; and
visually presenting, via a display monitor, the filtered
follow-up recommendations.

REJECTIONS AT ISSUE2
Claims 1–28 stand rejected under 35 U.S.C. § 101 as being directed to
patent ineligible subject matter. Final Act. 3–6.
Claims 1–3, 18, and 28 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Yetisgen-Yildiz et al. “A text

2 We have decided the Appeal before us; however, in the event of further
prosecution, the Examiner should evaluate claim 28 in light of In re Nuijten,
500 F.3d 1346 (Fed. Cir. 2007); Subject Matter Eligibility of Computer
Readable Media, 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010), and the
recent Decision in Ex parte Mewherter, 107 USPQ2d 1857 (PTAB 2013)
(precedential). We note that Appellant’s Specification specifically states
“[o]ptionally, the processor 104 can additionally or alternatively execute one
or more computer readable instructions carried by a carrier wave, a signal
or other transitory medium” (emphasis added). Spec. 3.
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processing pipeline to extract recommendations from radiology reports,” 46
J. of Biomedical Informatics (2013) (“Yetisgen-Yildiz”), and Jones (US
2012/0130745 A1; published May 24, 2012). Final Act. 7–11.
Claims 4–16 and 19–27 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Yetisgen-Yildiz, Jones, and
Downs (US 2009/0216696 A1; published Aug. 27, 2009). Final Act. 11–22.
Claim 17 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Yetisgen-Yildiz, Jones, Downs, and
Mullin (US 2012/0316890 A1; Dec. 13, 2012). Final Act. 22–23.
ANALYSIS
I. Claims 1–28 Rejected Under 35 U.S.C. § 101
A. Legal Principles
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
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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
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, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
(15 How.) 252, 267–68 (1854))); 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 192 (“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
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protection.”).
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 (quotation marks 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. (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.
The PTO recently published revised guidance on the application of
§ 101. USPTO’s January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance (“Memorandum”). Under that
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 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 (see 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 are not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
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(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 Memorandum.
B. The Examiner’s Conclusions and Appellants’ Arguments
The Examiner concludes the present claims recite retrieving prior
medical reports for a patient based on a patient identifier in a medical
imaging order and identifying/displaying follow-up recommendations,
which match an imaging modality filter in the prior medical reports. The
Examiner also determines the present claims do not amount to significantly
more than an abstract idea itself because the Examiner determines the
abstract idea is implemented on generic components that are well-
understood, routine, and conventional previously known to the industry.
Final Act. 5–6; Ans. 3–5 (relying on expertise in the art).
Appellant argues, similar to McRO, Inc. v. Bandai Namco Games
America Inc., 837 F.3d 1299, 1308–14 (Fed. Cir. 2016), the present claims
recite an improvement to a technical field of automated document
processing. Appeal Br. 8–10; Reply Br. 13. Appellant argues, similar to
BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d
1341 (Fed. Cir. 2016), the present claims recite a combination of non-
conventional and non-generic arrangement of known, conventional
elements, which results in an inventive concept. Appeal Br. 10; Reply Br.
3–4. Appellant argues the Examiner’s determination that the abstract idea is
implemented on generic components that are well-understood, routine, and
conventional previously known to the industry is conclusory. Appeal Br. 5–
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7.3 We disagree with Appellant.
C. Discussion
1. Step 2A, Prong 1
Patent eligibility under 35 U.S.C. § 101 is a question of law that is
reviewable de novo. See Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333
(Fed. Cir. 2012). We are aware of no controlling authority that requires the
Examiner to provide factual evidence under step one of the Alice framework
to support a determination that a claim is directed to an abstract idea.
We reproduce claim 1 below with emphases.
1. A method for identifying relevant follow-up
recommendations from medical reports, comprising:
obtaining, in electronic format, an imaging examination
order for a follow-up imaging examination of a patient, wherein
the imaging examination order includes an imaging modality for
the follow-up imaging examination of the patient, wherein the
imaging modality includes at least one from a group comprising
of computed tomography (CT), magnetic resonance (MR),
positron emission tomography (PET), single photon emission
computed tomography (SPECT), ultrasound (US) and X-ray;
identifying, with a processor, follow-up recommendations
in electronically formatted prior medical reports;
filtering the identified follow-up recommendations in
electronically formatted prior medical reports according to the
imaging modality of the imaging examination order; and
visually presenting, via a display monitor, the filtered
follow-up recommendations.

3 Appellant’s arguments pertaining to Electric Power Group, LLC v. Alstom
S.A., 830 F.3d 1350 (Fed. Cir. 2016) and Content Extraction &
Transmission v. Wells Fargo Bank, N.A., 776 F.3d 1343 (Fed. Cir. 2014)
(Appeal Br. 7–8) are moot because we do not rely on the Examiner’s
conclusions pertaining to those cases to reach our Decision.
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The emphasized portions of claim 14 recite managing personal
behavior (including following rules or instructions). According to the
Memorandum, managing personal behavior (including following rules or
instructions) falls into the category of certain methods of organizing human
activity. See Memorandum. Moreover, those certain methods of organizing
human activity are a type of an abstract idea. See id. Additionally, we
conclude the limitation “identifying . . . follow-up recommendations in
electronically formatted prior medical reports” can be performed in the
human mind, which falls into the category of mental processes (i.e., an
abstract idea). See id.
Because the present claims recite an abstract idea, we proceed to
prong 2.
2. Step 2A, Prong 2
The present claims do not integrate the abstract idea into a practical
application because they do not impose any meaningful limits on practicing
the abstract idea. In particular, we disagree with Appellant’s argument that
the present claims recite an improvement to a technical field of automated
document processing. Appeal Br. 8–10; Reply Br. 13.
Unlike the claims of McRO, the present claims do not recite rules for
lip sync and facial expression animation or an improvement in computer
technology.
Instead, the present claims recite an abstract idea as discussed supra,

4 Claim 1, reproduced above with emphases, recites similar features as
independent claims 18 and 28. Appellant does not argue claims 2–28
separately. Appeal Br. 5–10. We, therefore, group claims 1–28 together and
refer to claims 1–28 as the “present claims.”
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in § I.C.1. or at best, improving an abstract idea—not a technological
improvement. The Specification indicates the additional elements (i.e.,
“processor,” “display monitor,” and “data repository”5) recited in the present
claims are merely tools used to implement the abstract idea. Spec. 2–4.
Additionally, “a claim for a new abstract idea is still an abstract idea.”
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir.
2016) (emphasis added). “[U]nder the Mayo/Alice framework, a claim
directed to a newly discovered law of nature (or natural phenomenon or
abstract idea) cannot rely on the novelty of that discovery for the inventive
concept necessary for patent eligibility . . . .” Genetic Techs. Ltd. v. Merial
L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016) (citations omitted).
Appellant does not make any other arguments pertaining to step 2A,
prong 2. Because the present claims recite an abstract idea that is not
integrated into a practical application, we proceed to Step 2B.
3. Step 2B
We disagree with Appellant’s argument that the Examiner’s
determination that the abstract idea is implemented on generic components
that are well-understood, routine, and conventional previously known to the
industry is conclusory. Appeal Br. 5–7. The Examiner finds the abstract
idea is implemented on generic components that are well-understood,
routine, and conventional, as supported by “expertise in the art.” Final Act.
5–6; Ans. 3–5 (relying on expertise in the art). We find the Specification
supports the Examiner’s determination in this regard because it explains that
the “processor,” “display monitor,” and “data repository” are generic

5 Claims 18 and 28 recite “data repository,” whereas claim 1 does not.
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components. Spec. 2–4. Appellant’s Specification supports a finding that
these elements were well-understood, routine, and conventional components
because it describes them at a high level of generality and in a manner that
indicates they are sufficiently well-known. Id.
We disagree with Appellant’s argument that, similar to BASCOM, the
present claims recite a combination of non-conventional and non-generic
arrangement of known, conventional elements, which result in an inventive
concept. Appeal Br. 10; Reply Br. 3–4. Instead, the present claims recite an
abstract idea using generic components as discussed supra, in §§ I.C.1. and
I.C.2. or at best, improving an abstract idea—not an inventive concept.
Appellant does not argue claims 2–28 separately, but asserts the § 101
rejection of those claims should be withdrawn for at least the same reasons
as argued for independent claim 1. Appeal Br. 5–10. Based on our review
of dependent claims 2–17 and 19–27, these claims do not recite additional
features that would transform the abstract idea embodied in claims 1, 18, and
28 into an inventive concept. Accordingly, we sustain the Examiner’s
rejection of: (1) independent claims 1, 18, and 28; and (2) dependent claims
2–17 and 19–27 under 35 U.S.C. § 101.
II. Claims 1–28 Rejected Under 35 U.S.C. § 103
A. Claims 1–3, 18, and 28
The Examiner finds Yetisgen-Yildiz teaches automatically identifying
follow-up recommendations from electronically formatted radiology reports
such as computer tomography, magnetic resonance, and ultrasound, which
the Examiner maps to the limitation “the identified follow-up
recommendations in electronically formatted prior medical reports according
to the imaging modality of the imaging examination order” recited in claim
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1. Final Act. 8–9 (citing Yetisgen-Yildiz, Abstract, § 3, Fig. 1, Table 1).
The Examiner finds Yetisgen-Yildiz does not explicitly teach filtering. Final
Act. 8–9; Ans. 6. However, the Examiner finds Jones teaches parsing
medical reports by imaging modality and filtering the medical reports by
imaging modality to display only relevant medical reports, which the
Examiner maps to the limitation “filtering . . . according to the imaging
modality of the imaging examination order.” Final Act. 8–9 (citing Jones
¶¶ 17–19, 36); Ans. 6–7.
Appellant argues Jones fails to cure the deficiencies of Yetisgen-
Yildiz because Jones does not teach follow-up recommendations and,
therefore, cannot teach filtering them. Appeal Br. 11. Appellant argues
Jones’ drop down box is based on the modality of the order item being
filtered; that is, there is no reference to any non-list items, whereas the
claims require filtering the follow-up recommendations according to the
modality of the imaging examination order from which the follow-up
recommendation was identified. Appeal Br. 11–12; Reply Br. 4–5. We
disagree with Appellant.
At the outset, one cannot show nonobviousness “by attacking
references individually” where the rejections are based on combinations of
references. In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986)
(citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)). In this case, the
Examiner relies on Yetisgen-Yildiz to teach automatically identifying
follow-up recommendations from electronically formatted radiology reports
such as computer tomography, magnetic resonance, and ultrasound, which
teaches the limitation “the identified follow-up recommendations in
electronically formatted prior medical reports according to the imaging
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modality of the imaging examination order” recited in claim 1. Yetisgen-
Yildiz, Abstract, § 3, Fig. 1, Table 1 (cited at Final Act. 8–9). The Examiner
relies on Jones to teach parsing medical reports by imaging modality and
filtering the medical reports by imaging modality to display only relevant
medical reports, which teaches the limitation “filtering . . . according to the
imaging modality of the imaging examination order.” Jones ¶¶ 17–19, 36
(cited at Final Act. 8–9); Ans. 6–7. We agree with the Examiner’s findings
regarding the teachings of Yetisgen-Yildiz and Jones.
Appellant does not argue claims 2, 3, 18, and 28 separately, but rather
asserts the § 103 rejection of those claims should be withdrawn for at least
the same reasons as previously argued for independent claim 1. Appeal Br.
10–12. However, for the reasons discussed above, we are not persuaded the
Examiner erred regarding the §103 rejection of claim 1. Accordingly, we
sustain the Examiner’s rejection of: (1) independent claims 1, 18, and 28;
and (2) dependent claims 2 and 3 under 35 U.S.C. § 103.
B. Claims 4–17 and 19–27
The Examiner finds Yetisgen-Yildiz teaches a vector is a binary (i.e.,
0 or 1) vector to indicate the presence of the phrase and that the vector
undergoes further processing using a mathematical algorithm, such as
MaxEnt algorithm that determines the relevancy of the recommendations
based on the entropy, which the Examiner maps to the limitation “the
identified follow-up recommendations . . . [and] for each identified follow-
up recommendation a likelihood that a sentence described by a vector
contains a recommendation relevant to the follow-up imaging examination”
recited in claim 4. Final Act. 11 (citing Yetisgen-Yildiz, §§ 3.3.1–3.3.2).
The Examiner finds Yetisgen-Yildiz does not explicitly teach determining a
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score for each of the identified follow-up recommendations. Final Act. 12;
Ans. 7–8. However, the Examiner finds Downs teaches determining a score
for each of identified documents using vectors representation, which the
Examiner maps to the limitation “determining a score.” Final Act. 12 (citing
Downs ¶¶ 17, 38–40); Ans. 7–8.
Appellant argues Downs does not cure Yetisgen-Yildiz’s
shortcomings because Downs’ relevance score for a document is not a
relevance score for a follow-up recommendation. Appeal Br. 12–13; Reply
Br. 5.
At the outset, one cannot show nonobviousness “by attacking
references individually” where the rejections are based on combinations of
references. In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986)
(citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)). In this case, the
Examiner relies on Yetisgen-Yildiz to teach a vector is a binary (i.e., 0 or 1)
vector to indicate the presence of the phrase and that the vector undergoes
further processing using a mathematical algorithm, such as MaxEnt
algorithm that determines the relevancy of the recommendations based on
the entropy, which teaches the limitation “the identified follow-up
recommendations. . . [and] for each identified follow-up recommendation a
likelihood that a sentence described by a vector contains a recommendation
relevant to the follow-up imaging examination” recited in claim 1.
Yetisgen-Yildiz, §§ 3.3.1–3.3.2 (citing Final Act. 11). The Examiner also
finds that Downs teaches determining a score for each of identified
documents using vectors representation, which teaches the limitation
“determining a score.” Downs ¶¶ 17, 38–40 (citing Final Act. 12); Ans. 7–8.
We agree with the Examiner’s findings regarding the teachings of Yetisgen-
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Yildiz and Downs.
Appellant does not argue claims 5–17 and 19–27 separately, but rather
asserts the § 103 rejection of those claims should be withdrawn for at least
the same reasons as argued for dependent claim 4. Appeal Br. 12–13.
However, for the reasons discussed above, we are not persuaded the
Examiner erred regarding the §103 rejection of claim 4. Accordingly, we
sustain the Examiner’s rejection of claims 4–17 and 19–27 under 35 U.S.C.
§ 103.
We have only considered those arguments that Appellant actually
raised in the Briefs. Arguments Appellant could have made, but chose not to
make, in the Briefs have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(iv).
CONCLUSION
Claim(s)
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–28 101 Eligibility 1–28
1–3, 18, 28 103 Yetisgen-
Yildiz,
Jones,
1–3, 18, 28
4–16, 19–27 103 Yetisgen-
Yildiz,
Jones,
Downs
4–16, 19–27
17 103 Yetisgen-
Yildiz,
Jones,
Downs,
Mullin
17
Overall
Outcome
1–28
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See
37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED