Ex Parte Allen et al

Patent Trial and Appeal Board

Mar 18, 2019

14487532 (P.T.A.B. Mar. 18, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/487,532 09/16/2014 Carville 0. Allen
50170 7590 03/18/2019
IBM CORP. (WIP)
c/o WALDER INTELLECTUAL PROPERTY LAW, P.C.
17304 PRESTON ROAD
SUITE 200
DALLAS, TX 75252
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.
AUS920140303US1 1009
EXAMINER
WISE, OLIVIA M.
ART UNIT PAPER NUMBER
1631
MAIL DATE DELIVERY MODE
03/18/2019 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CORVILLE 0. ALLEN, ROBERTO DELIMA,
THOMAS J. EGGEBRAATEN, ANDREW R. FREED,
MARK G. MEGERIAN, and MARIEL. SETNES 1
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Application 14/487 ,532
Technology Center 1600
Before DONALD E. ADAMS, RYAN H. FLAX, and
RACHEL H. TOWNSEND, Administrative Patent Judges.
FLAX, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellants identify the Real Party in Interest as "International Business
Machines Corporation." Appeal Br. 2.
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Application 14/487 ,532
This is a decision on appeal under 35 U.S.C. § 134(a) involving
claims to a method and product for implementing a cognitive system that
outputs a treatment recommendation for a medical malady based on
treatment toxicity for a specified patient. Claims 1-5, 9-15, and 19-22 are
on appeal as rejected under 35 U.S.C. § 101. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
The Specification states, "[ t ]he present application relates generally to
an improved data processing apparatus and method and more specifically to
mechanisms for utilizing toxicity level evaluations when recommending
treatments using a question answering system." Spec. ,r 1. The
Specification further states, "recent research has been directed to generating
Question and Answer (QA) systems which may take an input question,
analyze it, and return results indicative of the most probable answer to the
input question. QA systems provide automated mechanisms for searching
through large sets of sources of content .... " Id. ,r 2. The Specification
explains, "Examples, of QA systems are Siri® from Apple®, Cortana® from
Microsoft®, and the Watson™ system available from International Business
Machines (IBM®) Corporation of Armonk, New York."2 Id. ,r 3.
The Specification further states, "it is assumed that the
treatments/drugs being considered have well-understood toxicities and that
2 We note also that two months after the filing date of the appealed
application (i.e., Nov. 2014) Amazon launched its Alexa/Echo product,
which is similar to the disclosed Siri and Cortana products.
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the toxicity information is readily available and up to date in the QA
system," and also that "[a]ny medical treatment is intended to be within the
spirit and scope of the illustrative embodiments" of the invention, and also
that "the mechanisms of the illustrative embodiments may be used with
regard to any medical or psychological condition." Id. ,r,r 18, 23. Further,
"[a]ny medical or psychological condition for which the toxicity of a
treatment plan to a patient is of concern may be the subject of the
mechanisms of the illustrative embodiments." Id. ,r 23.
The Specification further states, "mechanisms described herein may
be implemented as specialized hardware, software executing on general
purpose hardware, software instructions stored on a medium such that the
instructions are readily executable by specialized or general purpose
hardware, a procedure or method for executing the functions, or a
combination of any of the above." Id. ,r 31. The Specification further states,
"computer readable program instructions may be provided to a processor of
a general purpose computer, special purpose computer, or other
programmable data processing apparatus." Id. ,r 39.
Claims 1 is representative and is reproduced below:
1. A method, in a data processing system comprising
a processor and a memory comprising instructions executed by
the processor which configure the data processing system to
implement a cognitive system that outputs a treatment
recommendation for a medical malady based on treatment
toxicity for a specified patient, the method comprising:
receiving, by a question answering system of the cognitive
system, an input question specifying the medical malady of the
specified patient and requesting a treatment recommendation for
the medical malady;
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generating, by the question answering system of the
cognitive system, a set of candidate treatments for the medical
malady based on a natural language processing of a corpus of
electronic documents, obtained from one or more source
computing systems separate from the data processing system;
generating, by the cognitive system, for each candidate
treatment in the set of candidate treatments, a treatment toxicity
profile for the candidate treatment by performing natural
language processing on electronic documents in the corpus of
electronic documents that specify the candidate treatment and
corresponding toxicity criteria for the candidate treatment;
determining, by the question answering system, for each
candidate treatment, one or more constituent agents of the
candidate treatment;
calculating, by a toxicity scoring engine of the cognitive
system, for each candidate treatment, a treatment toxicity score
based on a comparison of patient medical attributes of the
specified patient to toxicity criteria associated with the one or
more constituent agents identified in the treatment toxicity
profile for the candidate treatment;
identifying, by the question answering system, in the
patient medical attributes, patient preference information
indicating at least one of symptoms of toxicity or one or more
levels of treatment toxicity scores the specified patient is willing
to tolerate, in comparison to a probability of beneficial result of
a corresponding treatment;
modifying, by the toxicity scoring engine, the treatment
toxicity score for at least one candidate treatment based on a
correlation of at least one of symptoms of the candidate treatment
or [[a]] the treatment toxicity score with the patient preference
information;
selecting, by the question answering system, at least one
candidate treatment as a treatment recommendation for treating
the medical malady of the specified patient based on treatment
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tox1c1ty scores for each candidate treatment m the set of
candidate treatments; and
outputting, by the question answering system to a user
computing device, a notification of the treatment
recommendation.
See Response to Final Office Action dated Aug. 18, 2016 ( amending the
claims after-final); and Advisory Action dated Sept. 8, 2016 (entering the
amendment); see also Miscellaneous Internal Document dated Sept. 8, 2016
(initialing amended claims with instructions to enter). 3
The following rejection is appealed:
Claims 1-5, 9-15, and 19-22 are rejected under 35 U.S.C. § 101 as
directed to an abstract idea without significantly more so as to provide an
inventive concept. Answer 2.
DISCUSSION
"[T]he examiner bears the initial burden ... of presenting a prima
facie case ofunpatentability. If that burden is met, the burden of coming
forward with evidence or argument shifts to the applicant." In re Oetiker,
977 F.2d 1443, 1445 (Fed. Cir. 1992). We have considered those arguments
3 Appellants' Appeal Brief does not include a Claims Appendix listing the
claims on appeal. Instead, Appellants submitted with their Appeal Brief "an
After Final Amendment," which proposed further amendments to the claims,
in addition to those made by Appellants on August 18, 2016 after the Final
Rejection and entered by the Examiner on September 8, 2016. See Appeal
Br. 7. The Examiner did not enter these newly proposed amendments to the
claims, but also did not object to the Appeal Brief as improper, which it was,
for lacking a listing of the claims on appeal. See Advisory action dated Nov.
21, 2016; 37 C.F.R. § 4I.37(c)(l)(v) and (c)(2). Therefore, we conclude the
claims on appeal are those submitted by Appellants on August 18, 2016, and
entered by the Examiner on September 8, 2016.
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made by Appellants in the Appeal Brief and properly presented in the Reply
Brief; arguments not so presented in the Briefs are waived. See 37 C.F.R.
§ 41.3 7 ( c )( 1 )(iv) (2015); see also Ex parte Borden, 93 USPQ2d 14 73, 14 7 4
(BP AI 2010) (informative) ("Any bases for asserting error, whether factual
or legal, that are not raised in the principal brief are waived.").
"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." Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 71 (2012) (quoting Gottschalkv.
Benson, 409 U.S. 63, 67 (1972)). Claims directed to nothing more than
abstract ideas (such as mathematical algorithms), natural phenomena, and
laws of nature are not eligible for patent protection. Diamond v. Diehr, 450
U.S. 175, 185 (1981); accord MPEP § 2106 (II) (discussing Diehr).
In analyzing patent-eligibility questions under the judicial exception
to 35 U.S.C. § 101, the Supreme Court instructs us to "first determine
whether the claims at issue are directed to a patent-ineligible concept." Alice
Corp. Pty. Ltd. v. CLS Bankint'l, 573 U.S. 208,218 (2014). If the claims
are determined to be directed to an ineligible concept we then move to a
second step and "consider 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." Id. at
217 (quoting Mayo, 566 U.S. at 97).
In addition to this direction by the Supreme Court, the PTO recently
published revised guidance on the application of§ 101. USPTO's January
7, 2019 Memorandum, 2019 Revised Patent Subject Matter Eligibility
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Guidance ("2019 Guidance Memorandum"). Under this guidance, in step
one of the Mayol Alice framework, 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 interactions such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.0S(a)-(c), (e)-(h)).
Furthermore, under the guidance, regarding step two of the Mayo/Alice
framework, only if a claim is determined to (1) recite a judicial exception
and (2) 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 § 2106.0S(d)); or
( 4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
STEP], PRONG]
The 2019 Guidance Memorandum identifies three key concepts
identified as abstract ideas:
(a) mathematical concepts including "mathematical
relationships, mathematical formulas or equations, mathematical
calculations"; (b) certain methods of organizing human activity,
such as "fundamental economic principles or practices,"
"commercial or legal interactions," and "managing personal
behavior or relationships or interactions between people"; and
( c) mental processes including "observation, evaluation,
judgment, [ and] opinion."
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The Examiner determined that the claimed methods and products
were similar to the mental processes a doctor would follow and ultimately
found the claims to be directed to "the abstract idea[] of ... a mental
process." Answer 3 (emphasis added) (citing In re Meyer, 688 F.2d 789
(CCPA 1982); SmartGene Inc. v Advanced Biological Labs., 555 Fed. Appx.
950 (Fed. Cir. 2014); Classen Immunotherapies Inc. v. Biogen IDEC, 659
F.3d 1057 (Fed. Cir. 2011); PerkinElmer Inc. v Intema Ltd., 496 Fed. Appx.
65 (Fed. Cir. 2012); and In re Grams, 888 F.2d 835 (Fed. Cir. 1989)).
The Federal Circuit has "recognize[d] that defining the precise
abstract idea of patent claims in many cases is far from a 'straightforward'
exercise." Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1150
(Fed. Cir. 2016) (quoting DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d
1245, 1257 (Fed. Cir. 2014)). However, "we continue to 'treat[] analyzing
information by steps people [ could] go through in their minds, or by
mathematical algorithms, without more, as essentially mental processes
within the abstract-idea category."' Id. at 1146-47 (quoting Electric Power
Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016) (citations
omitted)). The Federal Circuit has recognized that "a claim for a new
abstract idea is still an abstract idea." Id. at 1151.
As determined by the Examiner, the invention here is software or
programming, which is necessarily a mathematical relationship/calculation.
Moreover, the invention is medical advice software that takes data on a
patient's condition and data on relevant treatments into consideration, along
with data on the adverse effects (toxicity) of such treatments and data on
how such toxicity might impact the patient considering data on that patient's
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specific traits (tolerance). Based on this related data, the software performs
calculations and recommends a treatment.
This is, essentially, providing a task-focused, computerized doctor and
amounts to a mental process ( e.g., concepts performed in the human mind
(including an observation, evaluation, judgment, opinion)). As noted above,
the claims recite the following steps, which are essentially directed to such a
mental process:
receiving, by a question answering system of the cognitive
system, an input question specifying the medical malady of the
specified patient and requesting a treatment recommendation for
the medical malady;
generating, by the question answering system of the
cognitive system, a set of candidate treatments for the medical
malady based on a natural language processing of a corpus of
electronic documents, obtained from one or more source
computing systems separate from the data processing system;
generating, by the cognitive system, for each candidate
treatment in the set of candidate treatments, a treatment toxicity
profile for the candidate treatment by performing natural
language processing on electronic documents in the corpus of
electronic documents that specify the candidate treatment and
corresponding toxicity criteria for the candidate treatment;
determining, by the question answering system, for each
candidate treatment, one or more constituent agents of the
candidate treatment;
calculating, by a toxicity scoring engine of the cognitive
system, for each candidate treatment, a treatment toxicity score
based on a comparison of patient medical attributes of the
specified patient to toxicity criteria associated with the one or
more constituent agents identified in the treatment toxicity
profile for the candidate treatment;
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identifying, by the question answering system, in the
patient medical attributes, patient preference information
indicating at least one of symptoms of toxicity or one or more
levels of treatment toxicity scores the specified patient is willing
to tolerate, in comparison to a probability of beneficial result of
a corresponding treatment;
modifying, by the toxicity scoring engine, the treatment
toxicity score for at least one candidate treatment based on a
correlation of at least one of symptoms of the candidate treatment
or the treatment toxicity score with the patient preference
information;
selecting, by the question answering system, at least one
candidate treatment as a treatment recommendation for treating
the medical malady of the specified patient based on treatment
toxicity scores for each candidate treatment in the set of
candidate treatments; and
outputting, by the question answering system to a user
computing device, a notification of the treatment recom-
mendation.
See Response to Final Office Action dated Aug. 18, 2016. It is well-
established that mental processes are abstract ideas. CyberSource instructs
that "a method that can be performed by human thought alone is merely an
abstract idea and is not patent-eligible under§ 101." CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1373, 1375 (Fed. Cir. 2011) ("That
purely mental processes can be unpatentable, even when performed by a
computer, was precisely the holding of the Supreme Court in Gottschalk v.
Benson."). As stated in the Specification, "[t]he end goal of the QA system
is to provide answers to questions directed to treatments for diseases and
maladies that identify the best treatment that the particular patient can
tolerate taking into account the toxicities of the treatments and comorbidities
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and other conditions." Spec. ,r 21. This is precisely what a doctor would
consider, in their mind, going through the claimed steps, when determining
which treatments to recommend to a patient.
Thus, we conclude the claims are directed to a mental process, which
is an abstract idea.
Appellants argue the claims are not directed to an abstract idea for
several reasons. See Appeal Br. 9-27. Appellants argue their intent was to
claim an invention encompassing the specific computer environment
implementation of the claimed method, not some abstract idea performable
in the human mind or some mathematical principle. Id. 9-10. Appellants
also argue their claims recite specific, non-generic computing elements. Id.
These arguments are not persuasive.
Appellants' intentions are not determinative. See, e.g., SmartGene,
555 Fed. Appx. at 954--955 ("Claim 1 does no more than call on a
"computing device," with basic functionality for comparing stored and input
data and rules, to do what doctors do routinely .... Like the processes
claimed in Benson, the process of claim 1 'can be ... performed without a
computer' or, alternatively, 'can be carried out in existing computers long in
use, no new machinery being necessary.' 409 U.S. at 67, 93 S.Ct. 253 ....
Whatever the boundaries of the 'abstract ideas' category, the claim at issue
here involves a mental process excluded from section 101: the mental steps
of comparing new and stored information and using rules to identify medical
options.") Furthermore, the claims are directed to software running on an
undefined computer system having a processor and memory, programmed
with the software. That Appellants give names to software
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modules/programs, e.g., question answering (QA) system or cognitive
system, does not make a computer with such programming or the software
itself a non-generic computer component or a specific computer
environment. Nothing in Appellants' claims or Specification defines the
recited software as providing a specific improvement to computer
technology, rather, it is mere programming for an algorithm to access and
rank data in a rational manner to address medical patients' therapy inquiries,
run by a processor. See Spec. ,r,r 16-19, 21, 31--41, 63, 64, Figures 1 and 2.
Moreover, Appellants' Specification describes the invention in terms
of using "a QA system," not in terms of a new or improved QA system. See,
e.g., Spec. ,r,r 17, 42, 46, 50. Thus, even were a QA system to be considered
a non-generic computer element (which it is not), the claims merely utilize
or operate within such a thing, they do not create it or improve it. And, the
Specification never describes or explains what a cognitive system, as
claimed, is. See generally Spec. We understand this term to refer to how a
computer system or computer network, in some way, mimics human
thinking or intelligence. Thus, a cognitive system is not a non-generic
computer element, but is a way computers operate under programming.
These are not physical elements, as argued by Appellants, but are a part of
the software programming directed to the abstract idea identified above.
Appellants argue their claimed invention is directed to a specific
implementation tied to a specific computing environment. Appeal Br. 12.
Further, Appellants argue "the claim is specifically directed to solving a
problem within a computing environment using specifically configured
computing elements, where the operations recited in the present independent
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claims cannot be performed outside the specifically configured computing
environment." Id. at 15. This is not persuasive.
While the claimed invention is applicable to the medical field, it is not
tied to any special computing environment. To the contrary, the claims
recite no such special environment and the Specification describes the uses
to which the invention is put and the computer systems upon which the
invention operates in only the most general ways. See, e.g., Spec. ,r,r 4---6,
31--41, 53, 63---68, Figures 1, 2.
The Federal Circuit has established that collecting, classifying,
storing, and organizing data, regardless of whether such data manipulations
are limited to a particular technological environment, is an abstract idea and,
without more (which cannot be provided by generic components or steps
used in their routine and customary ways), is not patent eligible. See, e.g.,
Interval Licensing LLC v. AOL, Inc., 896 F.3d 1335 (Fed. Cir. 2018) (claims
directed to manipulating data for selective display using routine and
conventional instructions/programming not patent-eligible); SAP America,
Inc. v. Investpic, LLC, 890 F.3d 1016, 1018 (Fed. Cir. 2018) (claims directed
to "nothing but a series of mathematical calculations based on selected
information and the presentation of the results of those calculations" is
merely an advancement in an abstract idea and patent-ineligible, even
though physical things like databases and processors are claimed); In re TL!
Communications LLC Patent Litigation, 823 F.3d 607 (Fed. Cir. 2016)
( collecting and organizing data in the form of digital images is abstract and
patent ineligible, and using computer systems in their generic ways do not
add an inventive concept); Content Extraction and Transmission LLC v.
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Wells Fargo Bank, Nat'! Ass 'n, 776 F.3d 1343 (Fed. Cir. 2014) (extracting
data from documents, recognizing information therefrom, and storing the
information is abstract).
Appellants also argue "the claim is not attempting to pre-empt the
calculation of toxicity scores and thus, is not 'drawn to' an abstract idea."
Appeal Br. 18. This argument is also not persuasive.
It is well-established that, "[ w ]hile preemption may signal patent
ineligible subject matter, the absence of complete preemption does not
demonstrate patent eligibility." Ariosa Diagnostics, Inc. v. Sequenom, Inc.,
788 F.3d 1371, 1379 (Fed. Cir. 2015). "Where a patent's claims are deemed
only to disclose patent ineligible subject matter under the Mayo [Alice]
framework, as they are in this case, preemption concerns are fully addressed
and made moot." Id.
Appellants argue the facts here are analogous to those of Enfish and
McRO. Appeal Br. 19 (citing Enfzsh, LLC v. Microsoft Corp., 822 F. 3d
1327 (Fed. Cir. 2016); McRO, Inc. v. Bandai Namco Games Am. Inc., 837
F.3d 1299 (Fed. Cir. 2016)). This is not persuasive.
Unlike Enfzsh, where the Federal Circuit found the claims to be
patent-eligible as directed to an improvement in how computers function,
here, although the claims are directed, essentially, to software, they are not
"directed to a specific implementation of a solution to a problem in the
software arts," as were the claims in Enfzsh. See Enfzsh, 822 F.3d at 1339.
Appellants' invention does not improve how software functions on a
computer, nor is it even a new type of software (QA systems were well-
known and routinely used in commercial products), but is merely software
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running a different set of rules (an algorithm) for how to manipulate data,
that data being medical information.
In McRO, the Federal Circuit held claims that "set out meaningful
requirement for [a] first set of rules" by which a computer could synchronize
animated lip movements to spoken sounds, as a whole, were directed to "a
process specifically designed to achieve an improved technological result,"
that result being a computer-generated animation having automatically
synchronized mouth movements, and were not directed to an abstract idea.
McRO, 837 F.3d at 1316. Here, we have none of the claimed specificity of
technological improvement the Federal Circuit found present in the
invention of McRO. Also, contrary to McRO, where the ultimate product
produced is a synchronized computer animation, here the result of the
claimed method or the output of the claimed product is advice or a response
to an inquiry based on data.
Appellants argue:
While the general concept of providing a treatment
recommendation to a patient may be old and well known,
Appellants' claims are not directed to the general concept of
providing a treatment recommendation to a patient. This may be
an ultimate output that is generated by the claimed invention, i.e.
"outputting, by the question answering system to a user
computing device, a notification of the treatment
recommendation," but this is not the entirety of what is claimed
in the present claims.
Appeal Br. 25. This statement may be correct in that the appealed claims do
not just require a type of output, but this is not persuasive. Appellants'
claims are directed to providing treatment recommendations, based on data;
they provide a treatment recommendation by using known data about a
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patient with a condition and treatments, ranking the data, correlating it, and
organizing it. This is a subset of the mental steps a doctor would undertake
for the same task, which is an old and well-known concept.
In view of the above, we conclude the claims are directed to an
abstract idea, that is "a mental process," or put another way, a task-focused,
computerized mind of a doctor amounting to a mental process ( e.g., concepts
performed in the human mind (including an observation, evaluation,
judgment, opinion)).
STEP], PRONG2
We next consider whether the claimed treatment recommendation
method/system includes additional elements that integrate the abstract idea
into a practical application. Determining that the claimed abstract idea is
integrated into a practical application requires identifying an additional
element or a combination of additional elements in the claim to apply, rely
on, or use the judicial exception in a manner that imposes a meaningful limit
on the judicial exception, such that the claim is more than a drafting effort
designed to monopolize the exception.
Here, there is no practical integration of the abstract idea, rather, there
is simply usage of a generic computer to implement the abstract idea in the
technical field of medicine. See Spec. ,r,r 4--6, 31--41, 53, 63---68, Figures 1,
2, and claim 1 (reciting "a data processing system comprising a processor
and a memory"). Other than the limitations directed to the abstract idea,
discussed above, the invention is claimed at a very high level of generality.
Further, Appellants' Specification does not specify what types of medical
conditions or treatments or toxicities are of concern, but generalizes that any
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are applicable, and Appellants' Specification also does not specify what type
of computer or system is used or improved by the claimed invention, but
again only generalizes that, essentially, any computer technology is useable.
See, e.g., Spec. ,r,r 18, 23, 31--41, 63-68.
For example, as discussed above, the claimed invention is software
programming; it does not improve the functioning of a computer; it is not
effecting a treatment for a medical condition, but only recommending some
treatment; it is not transforming a machine or matter in any way. See, e.g.,
MPEP § 2106.0S(a}-(c). The only "implementations" of the abstract idea,
as claimed, are directed to a generic data processing system (programmed
with software) and a user computing device (for receiving a notification of
treatment). These are generic devices and the claims otherwise recite
limitations directed to the abstract idea with an instruction to apply it.
Appellants argue:
the claimed invention is directed to the technological
improvements, in a cognitive system that is specifically
configured to provide treatment recommendation outputs for
patients, which involve the generating operations that include
natural language processing of electronic documents in a corpus
of electronic documents specifically to identify candidate
treatment recommendations and generate toxicity profiles for
these treatment recommendations. Moreover, the claimed
invention is directed to the technological improvements of the
cognitive system elements that are specifically configured to
evaluate the correspondence between patient preference
information and toxicity levels or symptoms of the candidate
treatments base don't he [sic] toxicity profiles so as to identify
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those treatments that should be recommended for treatment of
the patient.
Appeal Br. 26. This is argument is not persuasive. The Specification does
not describe and the claims do not address a technological problem with
computers/"cognitive systems" in how treatment options are determined.
See, e.g., Data Engine Tech. LLC v. Google LLC, 909 F.3d 999, 1008 (Fed.
Cir. 2018) (noting the technological problems in computers and prior art
electronic spreadsheets, such as that the prior art electronic spreadsheets
were burdensome and hindered a user's ability to find or access the many
commands and features available "undercutting the effectiveness of the
computers as a means to review and edit a spreadsheet. . . . This was
particularly true for three-dimensional spreadsheets, which allowed users to
build spreadsheet workspaces consisting of multiple two-dimensional
spreadsheets, further increasing the complexity of using and navigating
between multiple spreadsheets.").
Thus, we do not ascertain any "technological improvements." Merely
calling something a "technological improvement" does not make it so. And
Appellants have not explained how "the natural language processing of
electronic documents in a corpus of electronic documents specifically to
identify candidate treatment recommendations and generate toxicity profiles
for these treatment recommendations" is a technological improvement to the
cognitive system. Cf Data Engine Tech, 909 F.3d at 1008 ("The Tab
Patents solved this known technological problem in computers in a
particular way-by providing a highly intuitive, user-friendly interface with
familiar notebook tabs for navigating the three-dimensional worksheet
environment. . . . The improvement allowed computers, for the first time, to
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provide rapid access to and processing of information in different
spreadsheets, as well as easy navigation in three-dimensional
spreadsheets .... Representative claim 12 recites precisely this technical
solution and improvement in computer spreadsheet functionality.").
Nor have Appellants explained the specific configuration of the
cognitive system elements that "evaluate the correspondence between
patient preference information and toxicity levels or symptoms of the
candidate treatments [based on the] toxicity profiles so as to identify those
treatments that should be recommended for treatment of the patient" and are
a technological improvement over the prior art. See id. at 1009 ( describing
the technological improvement in the improved display interface involved in
Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc., 880 F.3d 1356, 1359
(Fed. Cir. 2018), namely "[b ]y displaying only a limited list of common
functions and data from which to choose, the invention spared users from
time-consuming operations of navigating to, opening up, and then navigating
within, each separate application.").
Moreover, tying the claimed software to medical recommendations or
a computer environment, i.e., a technical field, without more, is not a
practical implementation of the abstract idea. See, e.g., MPEP § 2106.05(h);
see also Parker v. Flook, 437 U.S. 584, 588-90 (1978) (limiting an abstract
idea to one field of use or adding token post-solution components did not
make the concept patentable).
STEP 2 - INVENTIVE CONCEPT
Turning to step two of the Mayo/Alice framework, we are not
persuaded that the Examiner erred in determining that the elements of claim
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Application 14/487 ,532
1, considering all elements both individually and in combination, do not
amount to significantly more than the abstract idea of "a mental process."
Looking at claim 1, for example, we ask what more is claimed once we
exclude the limitations directed to the abstract idea and, what we find is,
essentially, nothing. The receiving, generating, determining, calculating,
identifying, modifying, and selecting limitations of claim 1, discussed above,
are each and all directed to the abstract idea. Once removed from
consideration we are left with the data processing system with a processor
and memory of the preamble and the user computing device to which this
system outputs a notification, which are generic computer components.
Appellants make the argument that the operations set forth in the
claims cannot be performed by a general purpose computer. Appeal Br. 28.
This argument is not supported, and is in conflict with, the description in
Appellants' Specification, which explicitly describes the computer systems
that can be programmed to perform the claimed method in the most general
of ways, e.g., an operating system running Microsoft® Windows®, a server
running LINUX®, a system with a plurality of processors or a single
processor, and a computer system having a main memory and ROM and
peripheral devices. Spec. ,r,r 63---68. Appellants argue that such a system
would have to be specially configured, but the only such special
configuration described in the Specification is the claimed programming,
which is directed to the abstract idea identified above.
Appellants argue the facts here are analogous to those of Bascom,
where claims were held to be patent eligible. Appeal Br. 30 ( citing Bascom
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Appeal2018-000444
Application 14/487 ,532
Global Internet Serv., Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir.
2016)). This argument is not persuasive.
Unlike Bascom, where the claims provided a software solution
applicable to solve a problem specific to the software-based environment of
the internet, the claims here are directed to a computer-based medical
advisor, which would serve as a task-focused stand-in for a medical doctor
and would perform the same mental processes as such a person. See
Bascom, 827 F.3d 1343--45, 1350-51. While undeniably useful, such an
advice generator is not patent-eligible as it is purely an abstract idea and the
claims simply append well-understood, routine, conventional
activities/components previously known to the industry, specified at a high
level of generality, to the judicial exception.
SUMMARY
The rejection of the claims as directed to patent-ineligible subject
matter is affirmed. Appellants argued the claims as a group, therefore, all
claims fall with claim 1.
TIME PERIOD FOR 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)(l )(iv).
AFFIRMED
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