Ex Parte Baronov et al

Patent Trial and Appeal Board

Oct 18, 2017

13826441 (P.T.A.B. Oct. 18, 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.
13/826,441 03/14/2013 Dimitar V. Baronov 3816/1006 1992
2101 7590 10/20/2017
Sunstein Kann Murphy & Timbers LLP
125 SUMMER STREET
BOSTON, MA 02110-1618
EXAMINER
GO, JOHN P
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
10/20/2017 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):
usptomail @ sunsteinlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DIMITAR V. BARONOV, EVAN J. BUTLER, JESSE M. LOCK,
and MICHAEL F. MCMANUS
Appeal 2016-0056631
Application 13/826,4412
Technology Center 3600
Before KENNETH G. SCHOPFER, TARA L. HUTCHINGS, and
MATTHEW S. MEYERS, Administrative Patent Judges.
SCHOPFER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the rejection of claims
1,2,4,6—11, 13, 14, 16—19, 26, 28, and 31. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
1 Our decision references the Appeal Brief (“Appeal Br.,” filed Oct. 5, 2015)
and Reply Brief (“Reply Br.,” filed May 4, 2016), and the Examiner’s
Answer (“Ans.,” mailed Mar. 4, 2016) and Final Office Action (“Final
Act.,” mailed Nov. 12, 2014). The record includes a transcript of the oral
hearing held September 21, 2017.
2 According to Appellants, the real party in interest is Etiometry Inc. Appeal
Br. 3.
Appeal 2016-005663
Application 13/826,441
BACKGROUND
According to the Specification, “[t]he present disclosure relates to
systems and methods for risk-based patient monitoring. More particularly,
the present disclosure relates to systems and methods for assessing the
current and future risks of a patient by combining data of the patient from
various different sources.” Spec. 2.
CLAIMS
Claim 1 is illustrative of the appealed claims and recites:
1. A computer-implemented method for risk-based
monitoring of a patient, comprising:
generating, by the computer, predicted probability
density functions of internal state variables for a time step tk+i,
each of the internal state variables describing a parameter
physiologically relevant to at least one of a treatment and a
condition of a patient at a time step tk+i, wherein the predicated
probability density functions are calculated using posterior
estimated probability density functions for each of the internal
state variables from a preceding time step, using the formula:
P(ISVs(tk+1) | M(tk)) — J ISVselSV P(ISVs(tk+i) | ISVs(tk))
P(ISVs(tk) | M(tk)) dISVs;
acquiring, with the computer from at least one
physiological sensor coupled to the patient, and storing in the
computer accessible memory, data associated with a plurality of
the internal state variables each describing a parameter
physiologically relevant to at least one of a treatment and a
condition of the patient at a time step tk+i;
generating, with the computer and using Bayes theorem,
posterior estimated probability density functions for the
plurality of the internal state variables for the time step tk+i at
least by computing the conditional probability density functions
of the acquired data given the internal state variables and the
predicated probability density functions of internal state
variables;
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Application 13/826,441
identifying, with the computer, from the generated
posterior probability density functions of the internal state
variables at time step tk+i, into which of a first plurality of
possible patient states the patient is currently categorizable; and
generating a probability value associated with each
identified possible patient state.
Appeal Br. 38.
REJECTION
The Examiner rejects claims 1, 2, 4, 6—11, 13, 14, 16—19, 26, 28, and
31 under 35U.S.C. § 101 as directed to non-statutory subject matter.
DISCUSSION
Appellants argue the claims as a single group. See Appeal Br. 25—36.
We select claim 1 as representative and claims 2, 4, 6—11, 13, 14, 16—19, 26,
28, and 31 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347
(2014) identifies a two-step framework for determining whether claimed
subject matter is judicially-excepted from patent eligibility under § 101.
According to Alice step one, “[w]e must 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.
The “directed to” inquiry . . . cannot simply ask whether the
claims involve a patent-ineligible concept, because essentially
every routinely patent-eligible claim involving physical
products and actions involves a law of nature and/or natural
phenomenon—after all, they take place in the physical world.
See Mayo, 132 S. Ct. [1289,] 1293 [(2012)] (“For all inventions
at some level embody, use, reflect, rest upon, or apply laws of
nature, natural phenomena, or abstract ideas.”) Rather, the
“directed to” inquiry applies a stage-one filter to claims,
considered in light of the specification, based on whether “their
character as a whole is directed to excluded subject matter.”
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Application 13/826,441
Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343,
1346 (Fed. Cir. 2015); see Genetic Techs. Ltd. v. Merial L.L.C.,
818 F.3d 1369, 1375, 2016 WL 1393573, at *5 (Fed. Cir. 2016)
(inquiring into “the focus of the claimed advance over the prior
art”).
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). “The
‘abstract idea’ step of the inquiry calls upon us to look at the ‘focus of the
claimed advance over the prior art’ to determine if the claim’s ‘character as a
whole’ is directed to excluded subject matter.” Affinity Labs of Tex., LLC v.
DIRECTV, LLC, 838 F.3d 1253, 1257-58 (Fed. Cir. 2016) (citing Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016);
Enfish, 822 F.3d at 1335.
In rejecting claim 1, the Examiner finds that the claim is directed to
“the basic concept of predicting patient health risks and diagnoses.” Final
Act. 2. The Examiner explains that “the current invention is directed
towards diagnosing and evaluating a patient with the most probable
diagnosis, and then subsequently making decisions for the treatment of the
patient.” Id. at 3^4. The Examiner also explains that “[djecision making for
the patient may be deemed organizing human activities, as the treatment
decisions affect the activities of those involved in the treatment.” Id. at 4.
Still further, the Examiner finds “that the current invention is also directed
towards the abstract idea of a mathematical formula/relationship.” Id. at 5.
With respect to the abstract ideas cited by the Examiner, the Examiner finds
that Appellants have “not provided any rationale explaining how the current
invention transforms the abstract ideas . . . into significantly more than the
abstract ideas themselves.” Id.
Appellants first argue that the Examiner has failed to raise a prima
facie rejection under 35 U.S.C. § 101. Appeal Br. 25. In support,
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Appellants raise three issues. First, Appellants assert that the rejection
“failed to assess the elements of the claims and failed to clearly and
specifically articulate a reasoned rationale to support the rejection.” Id. at 26
(emphasis omitted). Appellants’ main concern here is that the rejection is
conclusory and fails to provide “analysis of the language, elements ... or
substance of any claim.” Id. Second, Appellants assert that the alleged
abstract idea is an erroneous characterization of the claims because the
claims are not directed to predicting health risks and diagnoses. Id. at 27.
Third, Appellants assert that “Appellants have refuted the rejection under
§101 and the Office Action failed to address or rebut the Appellants’
arguments.” Id. (emphasis omitted).
We are not persuaded.
The Federal Circuit has repeatedly noted that “the prima facie case is
merely a procedural device that enables an appropriate shift of the burden of
production.” Hyatt v. Dudas, 492 F.3d. 1365, 1369 (Fed. Cir. 2007) (citing
In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). The court has, thus,
held that the USPTO carries its procedural burden of establishing a prima
facie case when its rejection satisfies the requirements of 35 U.S.C. § 132 by
notifying the applicant of the reasons for rejection, “together with such
information and references as may be useful in judging of the propriety of
continuing the prosecution of [the] application.” See In re Jung, 637 F.3d
1356, 1362 (Fed. Cir. 2011) (alteration in original) (quoting 35 U.S.C.
§ 132). Thus, all that is required of the Office is that it set forth the statutory
basis of the rejection, and the reference or references relied on, in a
sufficiently articulate and informative manner as to meet the notice
requirement of § 132. Id.\ see also Chester v. Miller, 906 F.2d 1574, 1578
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(Fed. Cir. 1990) (Section 132 “is violated when the rejection is so
uninformative that it prevents the applicant from recognizing and seeking to
counter the grounds for rejection.”).
Appellants do not contend that the Examiner’s rejection under § 101
was not understood or that the rejection otherwise fails to satisfy the notice
requirements of § 132. Indeed, Appellants’ understanding of the rejection is
clearly manifested by their response as set forth in the Briefs. Further, it is
not clear to us that Appellants’ contentions, beyond the concern that the
Examiner’s analysis is cursory, speak to whether the Examiner has
established a prima facie case. Rather, Appellants address the alleged
mischaracterization of the claims with respect to the alleged abstract ideas
presented by the Examiner. However, these issues do not show how
Appellants were not provided sufficient notice of the reasons for the
rejection. And with respect to the alleged conclusory nature of the rejection,
we are not persuaded because, as noted, Appellants’ arguments here and as
discussed below clearly show that Appellants sufficiently understand the
rejection presented in the Final Action.
Appellants next argue that “[t]he claims are directed to patent-eligible
subject matter because the claims are not ‘directed to’ an ‘abstract idea’
within the meaning of Alice.” Appeal Br. 30 (emphasis omitted). In
support, Appellants first assert that the abstract idea presented by the
Examiner is outside the broadest reasonable interpretation of the claims. Id.
Appellants also assert that the alleged abstract idea is not the type of abstract
idea giving rise to invalidity under Alice. Id.
We do not agree.
As noted above, the Examiner finds that the claims are directed to the
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abstract idea of predicting patient health risks and providing diagnoses, and
on a broader level, the Examiner finds that the claims are directed to a
mathematical formula/relationship. We agree that the Examiner’s
characterization is correct. To the extent Appellants assert that the claims do
not embody a prediction of patient health risks and diagnoses, but rather are
directed to generating probabilities of a possible patient state (see App. Br.
30), this distinction fails to apprise us of Examiner error. At the end of the
day, both concepts take physiological data from the patient and provide a
probability of the patient’s health status.
Further, we cannot distinguish the claims from the concept of using
physiological data as inputs to a mathematical relationship, i.e. claim 1
generates probability densities based on the formula provided in the claim,
measures physiological data, and uses the probability densities and measured
data to generate probability densities based on another mathematical
relationship (Bayes theorem). We find these steps similar to the steps that
the Federal Circuit determined were patent ineligible in Electric Power. In
Electric Power, the method claims at issue were directed to performing real­
time performance monitoring of an electric power grid by collecting data
from multiple data sources, analyzing the data, and displaying the results.
Elec. Power Grp. LLC, 830 F.3d at 1351—52. The Federal Circuit held that
the claims were directed to an abstract idea, explaining that “[t]he advance
they purport to make is a process of gathering and analyzing information of
a specified content, then displaying the results, and not any particular
assertedly inventive technology for performing those functions.” Id. at
1354.
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Accordingly, we find that independent claim 1 involves nothing more
than generating probabilities based on known data, receiving data,
determining a probable status based on predefined levels of change, and
presenting corresponding information, i.e. probability values — activities
squarely within the realm of abstract ideas. See, e.g., Elec. Power Grp.,
LLC, 830 F.3d at 1353—54 (When “[t]he focus of the asserted claims” is “on
collecting information, analyzing it, and displaying certain results of the
collection and analysis,” the claims are directed to an abstract idea.); see
also Accenture Glob. Servs., GmbH v. Guidewire Software, Inc., 728 F.3d
1336, 1344^45 (Fed. Cir. 2013) (Claims reciting “generalized software
components arranged to implement an abstract concept [of generating
insurance-policy-related tasks based on rules to be completed upon the
occurrence of an event] on a computer” are not patent eligible.).
Finally, with respect to step one of Alice, Appellants argue that the
claimed invention would not preempt all applications of the alleged abstract
idea, i.e. the claims do not preempt all methods of predicting patient health
risks or diagnoses. Appeal Br. 33—34. Although the Supreme Court has
described “the concern that drives this exclusionary principle [i.e., the
exclusion of abstract ideas from patent eligible subject matter] as one of pre­
emption,” Alice, 134 S. Ct. at 2354, characterizing pre-emption as a driving
concern for patent eligibility is not the same as characterizing pre-emption as
the sole test for patent eligibility. “The Supreme Court has made clear that
the principle of preemption is the basis for the judicial exceptions to
patentability” and “[f]or this reason, questions on preemption are inherent in
and resolved by the § 101 analysis.” Ariosa Diagnostics, Inc. v. Sequenom,
Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (citing Alice, 134 S. Ct. at 2354).
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Yet although “preemption may signal patent ineligible subject matter, the
absence of complete preemption does not demonstrate patent eligibility.” Id.
Step two of Alice is “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 (alteration in original)
(citing Mayo, 132 S. Ct. at 1294).
Similar to the situation in Electric Power, we find nothing sufficient
to remove the claims here from the class of subject matter held to be
ineligible for patenting. As the court explained in Electric Power, “merely
selecting information, by content or source, for collection, analysis, and
display does nothing significant to differentiate a process from ordinary
mental processes, whose implicit exclusion from § 101 undergirds the
information-based category of abstract ideas.” Elec. Power Grp., 830 F.3d
at 1355. As the Examiner points out, “[t]he claims [here] require no more
than a generic computer to perform generic computer functions that are well-
understood, routine and conventional activities previously known to the
industry.” Final Act. 2.
With respect to Alice step two, Appellants first argue that the
Examiner has acknowledged that the claim limitations define significantly
more than the abstract idea.3 Appeal Br. 35. Second, Appellants argue that
3 We acknowledge that the Examiner “concedes that the recited limitations
themselves, including the formula, are not well understood, routine and
conventional activities known to the industry.” Final Act. 4. However, the
Examiner finds that “receiving data, processing the received data to then
calculate, using the formula, a new set of data, and then subsequently
identifying particular data are well understood, routine and conventional
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the limitations of the claim, taken individually or together “do more than list
steps that are incidental to using a computer to ‘diagnose’ a patient.” Id. at
36. Appellants continue that the steps are not generic computer functions
and that the use of a mathematical formula here is akin to the use of
formulas in Diamond v. Diehr, 450 U.S. 175, 177—78 (1981) because they
“transform the process into an inventive application of the formula.” Id.
We are not persuaded.
First, we note that there is no indication in the claim or specification
that any specialized computer hardware or other inventive computer
components are required to perform the steps of the claim. The
Specification merely describes that the methods are “computer-
implemented” using “computer accessible memory” and that the system may
include a processor, memory, and a network interface. See, e.g., Spec. 4, 11.
Second, we find that the steps of the claim taken individually relate to only
the manipulation of data using a generic computer or acquiring data using
known physiological sensors. And taken as whole, the claim simply recites
the concept of using physiological data, either from a database or measured
from a patient, as variables in a series of mathematical formulas, i.e. the
steps taken together do no more than provide instructions to apply the
abstract idea of using data in multiple formulas to generate a probability
value. In short, we find the claims here are similar to those addressed in
activities that may be performed by a generic computer.” Id. The Examiner
continues that “the fact that the recited algorithm itself is not well
understood or routine in the industry does not preclude the function of
calculating a value using the algorithm from being a well understood,
routine and conventional function for a generic computer to perform.” Id. at
5.
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Electric Power. Appellants do not persuade us otherwise as Appellants do
little more than list the order of steps in the claim and assert that the claim
amounts to “significantly more.” See Appeal Br. 36. Thus, Appellants do
not persuasively explain how the application of mathematical equations here
transforms the claimed process into an inventive application of the formulas
included.
Based on the foregoing, we are not persuaded of reversible error in the
rejection of claim 1. Accordingly, we sustain the rejection. We also sustain
the rejection of claims 2, 4, 6—11, 13, 14, 16—19, 26, 28, and 31, which fall
with claim 1.
CONCLUSION
We AFFIRM the rejection of claims 1, 2, 4, 6—11, 13, 14, 16—19, 26,
28, and 31 for the reasons discussed herein.
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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