Ex Parte Bakker et al

Patent Trial and Appeal Board

Jul 9, 2018

14126580 (P.T.A.B. Jul. 9, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/126,580 12/16/2013 Bart Jacob Bakker
24737 7590 07/11/2018
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.
2011P01707WOUS 1635
EXAMINER
WEARE, MEREDITH H
ART UNIT PAPER NUMBER
3735
NOTIFICATION DATE DELIVERY MODE
07/11/2018 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 BART JACOB BAKKER,
RENE VAN DEN HAM, and HENDRIK JAN VAN OOJEN
Appeal2018-005405
Application 14/126,580 1
Technology Center 3700
Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
DAVID COTTA, Administrative Patent Judges.
ADAMS, Administrative Patent Judge.
DECISION ON APPEAL
This Appeal under 35 U.S.C. § 134(a) involves claims 1, 2, 4--8, and
16-21 (Final Act. 2 1). Examiner entered rejections under 35 U.S.C. § 101
and 35 U.S.C. § 103(a). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify "Koninklijke Philips N.V." as the real party in interest
(App. Br. 2).
2 Office Action mailed August 10, 2017.
Appeal2018-005405
Application 14/126,580
STATEMENT OF THE CASE
Appellants' disclosure "relates to a method of predicting a blood
dilution risk value of a first blood circulation, to a clinical decision support
system for predicting and displaying a blood dilution risk value, a program
element for predicting and displaying a blood dilution risk value and a
computer readable medium" (Spec. 1 ). Appellants' claim 1 is representative
and reproduced below:
1. A method of predicting a blood dilution risk value of a first
blood circulation, the method comprising:
providing measured coagulation data describing a stable
haemostatic situation of the first blood circulation at a first
point in time,
applying the measured coagulation data as an input for a
numerical model, the numerical model being a mathematical
and dynamic representation of a blood dilution of the first blood
circulation, wherein blood dilution includes blood loss or
lowered concentrations of blood clotting proteins,
performing a computer simulation of a time development
of the haemostatic situation by means of the numerical model
and based on the measured coagulation data used as an input for
the numerical model
calculating, with a processor, values of concentrations of
human blood proteins as an output of the simulation, and
translating, with the processor, at least some of the
calculated values of the concentrations of the human blood
proteins into a predicted blood dilution risk value, which risk
value describes at least one of a risk of embolism, lack of
clotting and bleeding for the first blood circulation due to blood
dilution.
(App. Br. 7 ( emphasis added).)
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Application 14/126,580
The claims stand rejected as follows:
Claims 1, 2, 4--8, and 16-21 stand rejected under 35 U.S.C. § 101.
Claims 1, 2, and 4--6 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Mann. 3
Claim 7 stands rejected under 35 U.S.C. § I03(a) as unpatentable over
the combination of Mann and Rodriguez-Fernandez. 4
Claim 8 stands rejected under 35 U.S.C. § I03(a) as unpatentable over
the combination of Mann and Gibbons. 5
Claims 16-21 stand rejected under 35 U.S.C. § I03(a) as unpatentable
over the combination of Mann and Anderson. 6
Subject Matter Eligibility:
ISSUE
Does the evidence of record support Examiner's finding that
Appellants' claimed invention is directed to patent ineligible subject matter?
ANALYSIS
The scope of 35 U.S.C. § 101 "is subject to an implicit exception for
'laws of nature, natural phenomena, and abstract ideas,' which are not
patentable." Intellectual Ventures I LLC v. Capital One Financial Corp.,
850 F.3d 1332, 1338 (Fed. Cir. 2017), citing Alice Corp. Pty. Ltd. v. CLS
3 Mann et al., US 2009/0298103 Al, published Dec. 3, 2009.
4 Rodriguez-Fernandez et al., Global Sensitivity Analysis of a Biochemical
Pathway Model, In: Corchado J.M., De Paz J.P., Rocha M.P., Fernandez
Rivero la F. (eds) 2nd International Workshop on Practical Applications of
Computational Biology and Bioinformatics (IWP ACBB 2008). Advances in
Soft Computing, vol 49. Springer, Berlin, Heidelberg (2009).
5 Gibbons et al., US 2009/0233312 Al, published Sept. 17, 2009.
6 Anderson, US 6,524,861 Bl, issued Feb. 25, 2003.
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Banklnt'l., 134 S. Ct. 2347, 2355 (2014); see also Mayo Collaborative
Services v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012) ("'[L]aws of
nature, natural phenomena, and abstract ideas' are not patentable" ( citation
omitted, alteration original)).
Alice, sets forth the following two-step analysis for determining patent
eligibility under Section 101:
First, we determine whether the claims at issue are directed to
one of those patent-ineligible concepts [e.g., a law of nature,
natural phenomenon, or abstract idea]. If so, we then ask, what
else is there in the claims before us? . . . We have described
step two of this analysis as a 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.
Alice, 134 S. Ct. at 2355 (alterations, citations, and quotation marks
omitted).
With respect to Alice's first step, Examiner finds that, when
considered as a whole, Appellants' claimed invention is "directed to an
abstract idea (i.e., analyzing measured coagulation data describing a stable
hemostatic situation to determine an individual's risk for lack of clotting,
embolism and/or bleeding)" (Final Act. 4; Ans. 2). We agree.
According to Appellants, their independent
[ c ]laim 1 goes beyond producing a quantity representative of the
individual's condition at one point in time and comparing the
quantity to a reference. For example, claim 1 recites using
measured data as an input to a numerical model and performing
a computer simulation of a time development of a haemostatic
situation by means of the numerical model to obtain a predicted
blood dilution risk value.
(App. Br. 3.) Stated differently, when considered as a whole, Appellants'
claimed invention comprises, at best, the steps of collecting, manipulating,
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and displaying data. "[ A ]n invention directed to collection, manipulation,
and display of data [is] an abstract process." Intellectual Ventures, 850 F.3d
at 1340; see generally id. at 1340-41.
Without additional limitations, a process that employs
mathematical algorithms to manipulate existing information to
generate additional information is not patent eligible. "If a
claim is directed essentially to a method of calculating, using a
mathematical formula, even if the solution is for a specific
purpose, the claimed method is nonstatutory." Parker v. Flook,
437 U.S. 584, 595[] (1978) (internal quotations omitted).
Digitech Image Techs., LLC v. Elecs. For Imaging, Inc., 758 F.3d 1344,
1351 (Fed. Cir. 2014).
Appellants further contend that their independent "[ c ]laim 1 requires a
computer implemented rule for the 'translating step' to automate a task
previously performed by a human" and this "rule," or algorithm, provides "a
specific way to solve a problem, rather than merely claiming the idea of a
solution or outcome" (App. Br. 4). We are not persuaded. "[A]nalyzing
information by steps people go through in their minds, or by mathematical
algorithms, without more," are "essentially mental processes within the
abstract-idea category." FairWarning IP, LLC v. Iatric Systems, Inc., 839
F.3d 1089, 1093 (Fed. Cir. 2016).
In sum, we agree with Examiner's finding that Appellants' claimed
invention is directed to an abstract idea (Final Act. 4 ).
With respect to Alice's second step, the search for an inventive
concept, Examiner finds that the additional elements in Appellants' claims
"are directed to [] insignificant extrasolution activity" that is "well-
understood, routine and conventional" in this art (Final Act. 4 ). Appellants
do not dispute Examiner's findings, but instead assert that their claimed
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invention "is analogous to the claims in McRo and is not directed to an
abstract idea" (App. Br. 4). We are not persuaded by Appellants'
contentions relating to McRO, Inc. v. Bandai Namco Games America, Inc.,
837 F.3d 1299 (Fed. Cir. 2016). InMcRO, "the automation goes beyond
merely 'organizing [existing] information into a new form' or carrying out a
fundamental economic practice," or, as in this case, performing known
manual methods of manipulating data that was "previously performed by
humans". McRO, 837 F.3d at 1315 (alteration original); see also App. Br. 4.
To the contrary, in McRO "[t]he claim use[d] ... rules in a process
specifically designed to achieve an improved technological result in
conventional industry practice." McRO, 837 F.3d at 1316. In contrast, as
Appellants' concede, the abstract ideas embedded in their claim simply
"automate[s] a task previously performed by a human" (see App. Br. 4),
which does not make the abstract idea patent-eligible. See also
FairWarning, 839 F.3d at 1093 ("analyzing information by steps people go
through in their minds, or by mathematical algorithms, without more," are
"essentially mental processes within the abstract-idea category"). Therefore,
we are not persuaded by Appellants' contention that their claimed invention
"is not an abstract idea under McRO" (App. Br. 4; see also Reply Br. 2--4).
CONCLUSION
The evidence of record supports Examiner's finding that Appellants'
claimed invention is directed to patent ineligible subject matter. The
rejection of claim 1 under 35 U.S.C. § 101 is affirmed. Claims 2, 4--8, and
16-21 are not separately argued and fall with claim 1.
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Obviousness:
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
ANALYSIS
Examiner finds that Mann discloses the subject matter of Appellants'
claim 1, but for performing the translating step by a processor (Final Act. 7).
In this regard, Examiner finds that instead of performing a translating step
by a processor, as is required by Appellants' claimed invention, Mann
performs the step "manually by a clinician" (id.). Examiner finds, however,
that, "it has been held that broadly providing an automatic means to replace
a manual activity to accomplish the same result is not sufficient to
distinguish over the prior art" (id. ( citing Manual of Patent Examining
Procedure§ 2144.04); see also Ans. 6). See In re Venner, 262 F.2d 91, 95
(CCP A 1958) ("it is well settled that it is not 'invention' to broadly provide
a mechanical or automatic means to replace manual activity which has
accomplished the same result"). Therefore, based on Mann, Examiner
concludes that, at the time Appellants' invention was made, it would have
been prima facie obvious to automate the translating step of Mann's method
so that it was performed by a "processor in order to provide a more
convenient method capable of being performed/monitored by less
experienced clinicians" (Final Act 7).
Examiner also relies upon Mann in combination with either
Rodriguez-Fernandez, Gibbons, or Anderson to make obvious the
requirements of a variety of Appellants' dependent claims (see Final Act. 8-
11; see also Ans. 7-8).
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Application 14/126,580
We find no error in Examiner's findings or conclusion of obviousness.
Appellants recognize that Mann discloses that: (1) "a clinician
compares the outputs of a simulation to reference values or other criterion to
determine if the outputs are symptomatic of a disease state or that the results
indicate that the patient or subject is pre-disposed such that an undesirable
medical event could occur in the future" and (2) "a method wherein a
clinician compares the output of the simulation to reference values to
determine if the subject is predisposed to hemostatic risk" (App. Br. 5 (citing
Mann ,r,r 33 and 150); see generally Ans. 4--5 (citing Mann ,r 150)).
Nevertheless, Appellants contend that Mann "clearly does not disclose or
suggest translating a calculated value into a risk value at least because Mann
never determines a risk value" (id.). We are not persuaded.
Appellants' independent claim 1 requires that the "risk value
describes at least one of a risk of embolism, lack of clotting and bleeding for
the first blood circulation due to blood dilution" (App. Br. 7). In addition, as
Examiner points out, Appellants' Specification discloses that
[t]he risk value may be embodied as a value ranging between 0
and 1 or may be embodied as a displayed color that may have
different nuances with respect to the present underlying
predicted risk. However, other different representations of the
risk value shall be comprised in the scope of the present
invention.
(Ans. 5 (citing Spec. 4).) As Examiner makes clear, although "Mann does
not expressly teach the risk value is, e.g., a numerical quantity, the claimed
risk value is not so limited by the language of [Appellants'] pending claims"
(id. at 6). Thus, for the foregoing reasons, we find no error in Examiner's
finding and conclusion that
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Mann teaches and/or suggests determining a risk value
corresponding at least to one of the patient being pre-
disposed/ at risk for hemophilia/a lack of clotting and the patient
not pre-disposed/at risk for hemophilia/a lack of clotting based
on at least some of the calculated values of the concentrations
of the human blood proteins, and therefore meets the limitations
of [Appellants'] claim 1.
(Ans. 6.) In this regard, Examiner finds that Mann discloses
determining the concentrations of a plurality of blood factors in
a biologic sample from the subject and simulating in silica the
concentration of thrombin from the determined concentrations,
comparing the simulated concentration of thrombin to a
reference by a clinician, and determining from the simulated
concentration if the subject is predisposed to hemostatic risk,
wherein the hemostatic risk is hemophilia, i.e., a "lack of
clotting").
(Id. (citing Mann ,r 33); see generally App. Br. 5 (citing Mann ,r 33).) For
the foregoing reasons, we are not persuaded by Appellants' contention that
Mann does not teach a risk value within the scope of Appellants' claimed
invention (see e.g., Reply Br. 4--5 (citing Mann ,r 150)).
Having found no deficiency in Mann, we are not persuaded by
Appellants' contention that Rodriquez-Fernandez, Gibbons, or Anderson
each fail to make up for Appellants' alleged deficiency in Mann (see App.
Br. 5---6; Reply Br. 5---6)
CONCLUSION
The preponderance of evidence relied upon by Examiner supports a
conclusion of obviousness.
The rejection of claim 1 under 35 U.S.C. § 103(a) as unpatentable
over Mann is affirmed. Claims 2 and 4---6 are not separately argued and fall
with claim 1.
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The rejection of claim 7 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Mann and Rodriguez-F emandez is affirmed.
The rejection of claim 8 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Mann and Gibbons is affirmed.
The rejection of claim 16 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Mann and Anderson is affirmed. Claims 17-21 are
not separately argued and fall with claim 16.
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).
AFFIRMED
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