Ex Parte Bagchi et al

Patent Trial and Appeal BoardAug 10, 2017

13077480 (P.T.A.B. Aug. 10, 2017)

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. 13/077,480 03/31/2011 Sugato Bagchi YOR920110241US1 5648 29154 7590 FREDERICK W. GIBB, III GIBB & RILEY, LLC 844 West Street SUITE 200 ANNAPOLIS, MD 21401 EXAMINER BURGESS, JOSEPH D ART UNIT PAPER NUMBER 3626 NOTIFICATION DATE DELIVERY MODE 08/14/2017 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): support @ gibbiplaw .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SUGATO BAGCHI, DAVID A. FERRUCCI, ANTHONY T. LEYAS, and ERIK T. MUELLER Appeal 2016-004348 Application 13/077,480 Technology Center 3600 Before ROBERT E. NAPPI, ERIC S. FRAHM, and STEVEN M. AMUNDSON, Administrative Patent Judges. AMUNDSON, Administrative Patent Judge. DECISION ON APPEAL Appellants1 seek our review under 35 U.S.C. § 134(a) from a final rejection of claims 1, 3—5, 7—13, 15, 16, and 18—25, i.e., all pending claims. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Appellants identify the real party in interest as International Business Machines Corporation. App. Br. 3. Appeal 2016-004348 Application 13/077,480 STATEMENT OF THE CASE The Invention According to the Specification, the invention concerns “using a question-answering system to support a human expert in problem solving in a particular domain, and more specifically to a decision-support application and system for problem solving using a question-answering system.” Spec. 12.2 The Specification explains that a “decision-support system for medical diagnosis and treatment comprises software modules embodied on a computer readable medium, and the software modules comprise an input/output module and a question-answering module.” Abstract. The Specification further explains that the input/output module receives “patient case information” and the question-answering module “generates a medical diagnosis or treatment query based on the patient case information and also generates a plurality of medical diagnosis or treatment answers for the query.” Id. Exemplary Claim Independent claim 1 exemplifies the subject matter of the claims under consideration and reads as follows: 1. A method comprising: receiving, by a decision-support system for medical diagnosis and treatment, patient case information regarding a patient, said decision-support system comprising a 2 This decision uses the following abbreviations: “Spec.” for the Specification, filed March 31, 2011; “Final Act.” for the Final Office Action, mailed April 17, 2015; “Adv. Act.” for the Advisory Action, mailed May 28, 2015; “App. Br.” for the Appeal Brief, filed August 26, 2015; “Ans.” for the Examiner’s Answer, mailed January 15, 2016; and “Reply Br.” for the Reply Brief, filed March 14, 2016. 2 Appeal 2016-004348 Application 13/077,480 computerized device that has access to evidence sources containing medical domain knowledge; analyzing, by said decision-support system, said patient case information to identify semantic concepts; generating, by said decision-support system, a query based on said semantic concepts, said query comprising a medical question; generating, by said decision-support system, answers to said query by applying natural language processing techniques to said medical domain knowledge within said evidence sources, said evidence sources comprising information in unstructured form; calculating, by said decision-support system, numerical values of evidence dimensions for each of said answers; calculating, by said decision-support system, corresponding confidence values for said answers, each confidence value for each answer being based on said numerical values of said evidence dimensions as calculated for said answer; outputting, by said decision-support system to a decision maker for said patient, said answers, said numerical values of said evidence dimensions for each of said answers, and said corresponding confidence values for said answers so that said answers, said numerical values of said evidence dimensions for each of said answers, and said corresponding confidence values for said answers are usable by said decision-maker to make a decision regarding said patient; storing, by said decision-support system in a tangible repository, said answers, said numerical values of said evidence dimensions for each of said answers, and said corresponding confidence values for said answers; in response to new medical domain knowledge being added to said evidence sources, automatically repeating, by said decision-support system, said generating of said answers to said query, said calculating of said numerical values of said evidence dimensions for each of said answers and said 3 Appeal 2016-004348 Application 13/077,480 calculating of said corresponding confidence values for said answers in order to determine whether previously generated answers and corresponding confidence values stored in said tangible repository would change based on said new medical domain knowledge; and, automatically sending, by said decision-support system, an alert to said decision-maker based on a change occurring in any of said previously generated answers and corresponding confidence values, said alert being usable by said decision maker to reevaluate said decision. App. Br. 26—27 (Claims App.). The Rejection on Appeal Claims 1, 3—5, 7—13, 15, 16, and 18—25 stand rejected under 35 U.S.C. § 101 as directed to non-statutory subject matter. Final Act. 3, 7—8. ANALYSIS We have reviewed the rejection of claims 1, 3—5, 7—13, 15, 16, and 18—25 in light of Appellants’ arguments that the Examiner erred. For the reasons explained below, we disagree with Appellants’ assertions regarding error by the Examiner. We concur with the Examiner’s conclusion that the claims recite patent-ineligible subject matter under § 101. We adopt the Examiner’s findings and reasoning in the Final Office Action (Final Act. 3, 7—8), Advisory Action (Adv. Act. 2), and Answer (Ans. 4—11) that relate to the § 101 rejection. We add the following to address and emphasize specific findings and arguments. The §101 Rejection of Claims 1, 3—5, 7—13, 15, 16, and 18—25 Introduction The Patent Act defines patent-eligible subject matter broadly: “Whoever invents or discovers any new and useful process, machine, 4 Appeal 2016-004348 Application 13/077,480 manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.” 35 U.S.C. § 101. In Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 70 (2012), and Alice Corp. v. CLS Bank International, 134 S. Ct. 2347, 2354 (2014), the Supreme Court explained that § 101 “contains an important implicit exception” for laws of nature, natural phenomena, and abstract ideas. See Diamond v. Diehr, 450 U.S. 175, 185 (1981). In Mayo and Alice, the Court set forth a two-step analytical framework for evaluating patent-eligible subject matter: First, “determine whether the claims at issue are directed to” a patent- ineligible concept, such as an abstract idea. Alice, 134 S. Ct. at 2355. If so, “consider the elements of each claim both individually and ‘as an ordered combination’ to determine whether the additional elements” add enough to transform the “nature of the claim” into “significantly more” than a patent- ineligible concept. Id. (quoting Mayo, 566 U.S. at 79); see Affinity Labs of Tex., LLCv. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016). Step one in the Mayo!Alice framework involves looking at the “focus” of the claims at issue and their “character as a whole.” Elec. Power Grp., LLC v. Alstrom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). Step two involves the search for an “inventive concept.” Alice, 134 S. Ct. at 2355; Elec. Power Grp., 830 F.3d at 1353. An “inventive concept” requires more than “well-understood, routine, conventional activity already engaged in” by the relevant community. RapidLitig. Mgmt. Ltd. v. CellzDirect, Inc., 827 F.3d 1042, 1047 (Fed. Cir. 2016) (quoting Mayo, 566 U.S. at 79-80). 5 Appeal 2016-004348 Application 13/077,480 Mayo!Alice Step One Appellants assert that the Examiner erred in rejecting independent claims 1,13, and 23 under § 101 because the claims are “inextricably tied to computer technology” and “require[] the use of computer technology to access, search and process medical domain knowledge contained in evidence sources, to generate outputs, to generate alerts, etc.” App. Br. 14; Reply Br. 5—6. Appellants similarly assert that the claims “define search and analysis techniques” that “can only be implemented on a machine and cannot be performed by a human using pencil and paper,” in particular, “applying natural language processing techniques to medical domain knowledge and calculating confidence values for answers based on numerical values of evidence dimensions.” App. Br. 22; Reply Br. 3, 10, 17. Appellants’ assertions do not persuade us of Examiner error because the Examiner determines that the claims are directed to the abstract ideas of: [1] comparing new and stored information and using rules to identify options (because the limitations outline comparing new answers, numerical values, and confidence values to previous answers, numerical values, and confidence values when new domain knowledge is added and alerting when changes occur to the answers, numerical values, and confidence values), [2] using categories to organize, store, and transmit data (because the limitations outline categorizing patient case information into questions, answers, numerical values for evidence dimensions, and corresponding confidence values, and outputting this information), and [3] a formula for computing an alarm limit (because the limitations outline determining when a limit has been reached for alerting [that] changes have occurred). Ans. 7. The Examiner reasons that the “claims do not explicitly recite” those abstract ideas but implicitly embody them in the “receiving, analyzing, 6 Appeal 2016-004348 Application 13/077,480 generating, calculating, outputting, storing, repeating, and sending” limitations. Id. at 7—8. Using conventional computer technology as a tool to accomplish abstract-idea processes does not make the ideas any less abstract. See Elec. Power Grp., 830 F.3d at 1354. “[N]ot every claim that recites concrete, tangible components escapes the reach of the abstract-idea inquiry.” In re TLI Commc ’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016). As the Examiner points out, the “[c]laims in Alice could not be done by a human using pencil and paper and were still deemed subject matter ineligible.” Ans. 11; see Alice, 134 S. Ct. at 2353, 2360 (noting that “[a]ll of the claims are implemented using a computer”). So even if the claims here require the use of computer technology, that does not change their character as a whole. The inability of a human to accomplish each limitation “does not alone confer patentability.” See FairWarning, IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1098 (Fed. Cir. 2016). Appellants argue that the claims reflect “an improvement in the functioning of the computer and an improvement in another technology.” App. Br. 14; Reply Br. 6. In particular, Appellants contend that the claims are “an innovation in computer technology” that “overcome significant problems that arise in the field of medical diagnosis and treatment,” such as “poor question asking by the decision-maker; determination of which of several answers are the most accurate; and maintenance by the decision maker of the proper standard of care given that new medical domain knowledge is continuously being developed and added to the evidence sources.” App. Br. 14; Reply Br. 4, 6. In addition, Appellants contend that the claims “overcome a problem arising” in the field of medical diagnosis 7 Appeal 2016-004348 Application 13/077,480 and treatment because they “automatically repeat[] processing as new medical domain knowledge is added” to evidence sources and thus “ensur[e] that decision-makers always have the most up-to-date (best) answers and confidence scores for the those answers . . . App. Br. 15; Reply Br. 7, 12. Appellants’ argument that the claims improve the functioning of a computer does not persuade us of Examiner error because Appellants do not describe an advance in hardware or software that, for example, causes a computer to operate faster or more efficiently. In addition, the Examiner determines that the claims do not “improve the functioning of a computer.” Ans. 6. Appellants do not address the operation of a computer itself, focusing instead on the field of medical diagnosis and treatment and the problems in that field the claims purport to address. App. Br. 14—15; Reply Br. 6—7, 12. But “limiting an abstract idea to one field of use” does not impart patent eligibility. See Bilski v. Kappos, 561 U.S. 593, 612 (2010); see also Parker v. Flook, 437 U.S. 584, 589—90 (1978); Affinity Labs, 838 F.3d at 1259. Mayo/Alice Step Two Appellants assert that the Examiner erred in rejecting claims 1,13, and 23 under § 101 because the claims include “limitations that when viewed individually and/or in an ordered combination amount to significantly more than any one” of the abstract ideas identified by the Examiner. App. Br. 15—16; Reply Br. 10-11; see Final Act. 3, 7; Adv. Act. 2. Appellants rely on the following six limitations: (1) “generating, by said decision-support system, answers to said query by applying natural language processing techniques to said medical domain knowledge within said evidence sources, said evidence sources comprising information in 8 Appeal 2016-004348 Application 13/077,480 unstructured form”; (2) “calculating, by said decision-support system, numerical values of evidence dimensions for each of said answers”; (3) “calculating, by said decision-support system, corresponding confidence values for said answers, each confidence value for each answer being based on said numerical values of said evidence dimensions as calculated for said answer”; (4) “outputting, by said decision-support system to a decision-maker for said patient, said answers, said numerical values of said evidence dimensions for each of said answers, and said corresponding confidence values for said answers so that said answers, said numerical values of said evidence dimensions for each of said answers, and said corresponding confidence values for said answers are usable by said decision-maker to make a decision regarding said patient”; (5) “in response to new medical domain knowledge being added to said evidence sources, automatically repeating, by said decision-support system, said generating of said answers to said query, said calculating of said numerical values of said evidence dimensions for each of said answers and said calculating of said corresponding confidence values for said answers in order to determine whether previously generated answers and corresponding confidence values stored in said tangible repository would change based on said new medical domain knowledge”; and, (6) “automatically sending, by said decision-support system, an alert to said decision-maker based on a change occurring in any of said previously generated answers and corresponding confidence values, said alert being usable by said decision-maker to re-evaluate said decision”. App. Br. 16; Reply Br. 10-11. Appellants argue that “[t]hese limitations (l)-(6) add significantly more because they effect transformation or reduction of a particular article to a different state or thing.” App. Br. 16 (emphasis omitted); Reply Br. 11. In particular, Appellants contend that “these limitations take patient information and medical domain knowledge” and “process” those inputs to “output answers, numerical values of evidence dimensions for each of the 9 Appeal 2016-004348 Application 13/077,480 answers, and corresponding confidence values for the answers.” App. Br. 16—17; Reply Br. 11, 12. Appellants also argue that “[t]hese limitations (l)-(6) add significantly more because they add a specific limitation other than what is well-understood, routine and conventional in the field . . . .” App. Br. 17 (emphasis omitted); Reply Br. 13. Appellants’ arguments do not persuade us of Examiner error because they identify the features constituting the abstract ideas. See Ans. 7—8; see also Intellectual Ventures ILLC v. Capital One Fin. Corp., 850 F.3d 1332, 1340-41 (Fed. Cir. 2017) (noting that “the underlying concept embodied by the limitations [alleged to provide a concrete solution] merely encompasses the abstract idea itself’). We agree with the Examiner that the claims recite the additional elements of: a decision support system, a computerized device, tangible repositories, a computer processor, a computer program product comprising a tangible computer readable storage device, an input/output module, a patient case analysis module, a question generation module, and a question answering module to perform the receiving, analyzing, generating, calculating, outputting, storing, repeating, and sending steps. Ans. 8. We also agree with the Examiner that those additional elements “are recited at a high level of generality and only perform generic functions” and, therefore, do not transform the “nature of the claim” into “significantly more” than a patent-ineligible concept. Id. By contending that the claims transform patient information and medical domain knowledge into answers and calculated values, Appellants concede that the claims employ mathematical algorithms to manipulate existing information to generate additional information. “Without additional limitations,” however, “a process that employs mathematical algorithms to 10 Appeal 2016-004348 Application 13/077,480 manipulate existing information to generate additional information is not patent eligible.” Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014). Although Appellants argue that the claims cover “significantly more” than a patent-ineligible concept because they “add a specific limitation other than what is well-understood, routine and conventional in the field,” Appellants do not identify any specific unconventional feature. App. Br. 17; Reply Br. 13. Appellants do not allege any novelty in, for example, querying unstructured data by applying natural-language processing techniques or calculating confidence values for answers. Moreover, “under 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. MerialL.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016); see Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (noting that “a claim for a new abstract idea is still an abstract idea”). Further, the Federal Circuit has expressly rejected the notion that “abstract ideas remain patent-eligible under § 101 as long as they are new ideas not previously well known, and not routine activity.” Ultramercial, Inc. v. Hulu LLC, 772 F.3d. 709, 714—16 (Fed. Cir. 2014). Appellants contend that the claims do not preempt “all practical uses” of the underlying ideas. App. Br. 18, 21; Reply Br. 7, 14, 15. That contention does not persuade us of Examiner error. While preemption may denote patent ineligibility, its absence does not demonstrate patent eligibility. See FairWarning, 839 F.3d at 1098. For claims covering a patent-ineligible concept, preemption concerns “are fully addressed and 11 Appeal 2016-004348 Application 13/077,480 made moot” by an analysis under the Mayo!Alice framework. Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). Appellants also assert that the Examiner erred in rejecting claims 1, 13, and 23 under § 101 because the claims “are specifically confined to a particular useful application,” namely, “analyze patient case information, formulate queries to a medical domain knowledge database, and generate answers for a decision maker.” App. Br. 15; Reply Br. 6, 12; see App. Br. 17; Reply Br. 13. We disagree. As explained above and in the Answer, the claims are directed to a patent-ineligible concept and lack additional elements sufficient to transform them into a patent-eligible invention. See, e.g., Ans. 7—8. Manipulating input information to generate output information does not rise to the level of an “inventive concept.” See, e.g., Synopsys, 839 F.3d at 1150—52. Summary for Independent Claims 1,13, and 23 For the reasons discussed above, Appellants’ arguments have not persuaded us that the Examiner erred in rejecting claims 1,13, and 23 under §101. Hence, we sustain the rejection of claim 1,13, and 23. Dependent Claims 3-5,7-12,15,16,18-22,24, and 25 Appellants do not make any separate substantive patentability arguments for dependent claims 3—5, 7—12, 15, 16, 18—22, 24, and 25. App. Br. 14—25; Reply Br. 3—17. Because Appellants do not argue the claims separately, we sustain the § 101 rejection of claims 3—5, 7—12, 15, 16, 18— 22, 24, and 25 for the same reasons as claims 1,13, and 23. See 37 C.F.R. § 41.37(c)(l)(iv). 12 Appeal 2016-004348 Application 13/077,480 DECISION We affirm the Examiner’s decision to reject claims 1, 3—5, 7—13, 15, 16, and 18—25. 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). See 37 C.F.R. §41.50(f). AFFIRMED 13