Ex Parte Buisman et al

Patent Trial and Appeal Board

May 31, 2017

13027537 (P.T.A.B. May. 31, 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.
13/027,537 02/15/2011 Harm Jacob BUISMAN 2010P00204US01 7002
24737 7590 06/02/2017
PTTTT TPS TNTFT T FfTTTAT PROPFRTY fr STANDARDS
EXAMINER
465 Columbus Avenue NAJARIAN, LENA
Suite 340
Valhalla, NY 10595 ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
06/02/2017 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):
marianne. fox @ philips, com
debbie.henn @philips .com
patti. demichele @ Philips, com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HARM JACOB BUISMAN and
ALEKSANDRA TESANOVIC
Appeal 2015-005028
Application 13/027,537
Technology Center 3600
Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
MICHAEL W. KIM, Administrative Patent Judges.
FISCHETTI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Appellants seek our review under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1—8, 10—17, and 19—22. We affirm.
1 The Appellants identify Koninklijke Philips Electronics NV as the real
party in interest. (Appeal Br. 1).
Appeal 2015-005028
Application 13/027,537
THE CLAIMED INVENTION
Appellants’ claims are directed generally to a system and method of
displaying images on a patient display during a teleconsultation. (Spec. 1,
1. 27—2,1. 1). Claim 19 is illustrative of the claimed subject matter:
19. A computer implemented method of displaying
images on a patient display during a teleconsultation using a
remote patient management system, the method comprising:
accessing a patient record from a patient record database,
creating a patient profile using the patient record,
identifying a consultation aim using the patient profile,
determining a list of topics using the consultation aim,
creating a teleconsultation outline using the list of topics,
selecting a set of images using the list of topics,
displaying the teleconsultation outline on the healthcare
professional display during the teleconsultation,
displaying the images on the patient display during the
teleconsultation.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Porras US 2010/0137693 A1 June 3,2010
REJECTIONS
The following rejections are before us for review:
The Examiner rejected claims 1—8, 10—17, and 19—22 under 35 U.S.C.
§ 101 as reciting ineligible subject matter.
The Examiner rejected claim 22 under 35 U.S.C. § 112, second
paragraph, as indefinite on the basis of a lack of antecedent basis for the
term “the patient display.”
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Application 13/027,537
The Examiner rejected claims 1—8, 10—17, and 19—22 under 35 U.S.C.
§ 102(e) as anticipated by Porras.
FINDINGS OF FACT
We find the following facts by a preponderance of the evidence:
1. The Specification describes that a “patient profile may be created by
examining the data and determining if the patient has data which
indicates the need for treatment or counseling on a particular medical
condition or topic.” (Spec. 6,11. 3—5).
2. The Specification describes that a “consultation aim as used herein is a
goal or a list of deliverables to be achieved during a teleconsultation.”
{Id. at 6,11. 13-14).
3. The Specification describes that “[njormally, the aim of the consultation
is to address the most prominent problems with the patient.” {Id. at 22,
11. 7-8).
4. The Specification describes:
Using the consultation aim a list of topics can be constructed to
meet the consultation aim. For instance in the case of the patient
with recently diagnosed heart disease these could be a list of
topics which the healthcare professional should discuss with the
patient in order to inform him or her of the condition.
{Id. at 6,11. 19-22).
5. The Specification indicates that a “‘computing device’ as used herein
refers to any device comprising a processor.” {Id. at 3,11. 11—12).
6. The Specification defines a “display” as “an electronic device adapted
for graphically displaying text, images, multimedia clips, video, and
other visual content. Examples of a display include, but are not limited
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to: a computer monitor, the screen of a cellular telephone, and a
television.” (Id. at 4,11. 8—11).
7. Porras discloses permitting a patient to select from available content to
view, or select from “modes” such as text, audio, video, surveys, or
games. (Porras para. 18—20).
8. Porras discloses permitting a medical professional to select content for a
patient. (Id. at para. 21).
9. Porras discloses “authenticating” a patient before delivering content,
querying, or “stimulating participation” of a patient in their care. (Id. at
para. 22).
10. Porras discloses:
transmitting first data to the digital data display device from at
least one database, wherein the first data is chosen for
transmission based on at least real-time data related to medical
treatment of the authenticated patient. The authenticated patient
can be allowed to choose from the first data additional data for
transmission ....
(Id. at para. 23).
ANALYSIS
Rejection under 35 U.S.C. § 101
Appellants argue the claims include “various elements of hardware,”
transform data, and are a more “limited and specific improvement” such that
they do not “try to protect ‘the abstract idea of managing a teleconsultation’
as alleged by the Examiner.” (Reply Br. 2—3). We are not persuaded by
Appellants’ arguments.
The patent statute provides that a patent may be obtained for “any new
and useful process, machine, manufacture, or composition of matter, or any
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new and useful improvement thereof.” 35 U.S.C. § 101. Yet the Supreme
Court has “long held that this provision contains an important implicit
exception: Laws of nature, natural phenomena, and abstract ideas are not
patentable.” Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134 S. Ct. 2347, 2354
(2014) (quoting Ass 'n for Molecular Pathology v. Myriad Genetics, Inc., 133
S. Ct. 2107, 2116 (2013)). The Court has, thus, made clear that
“[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.” Gottschalkv. Benson, 409 U.S. 63, 67
(1972).
The Supreme Court in Alice reiterated the two-step framework, set
forth previously in Mayo Collaborative Services v. Prometheus Labs., Inc.,
132 S. Ct. 1289, 1300 (2012), “for distinguishing patents that claim laws of
nature, natural phenomena, and abstract ideas from those that claim patent-
eligible applications of these concepts.” Alice, 134 S. Ct. at 2355. The first
step in that analysis is to “determine whether the claims at issue are directed
to one of those patent-ineligible concepts.” Id. If so, the second step is to
consider the elements of the claims “individually and ‘as an ordered
combination”’ to determine whether the additional elements “‘transform the
nature of the claim’ into a patent-eligible application.” Id. (citing Mayo, 132
S. Ct. at 1291, 1297). In other words, the second step is to “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.’” Id. (citing Mayo, 132 S.
Ct. at 1294).
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In rejecting independent claims 1,19, and 20, the Examiner finds that
the claimed steps are “directed to the abstract idea of managing a
teleconsultation,” and by merely being a manner of organizing human
activities are, thus, directed to an abstract idea. (Answer 9—10). We agree.
Representative independent claim 19 is directed to “a method for
displaying images,” involving accessing a patient record, using the record to
select images to display, displaying the images during a “teleconsultation,”
and also displaying an “outline” created from the same information used to
select images. There is no indication in the claim that a machine is required
to perform any of these steps, except for the preamble recitation that the
method is “computer-implemented.”
In addition, none of the steps individually require any special
machine, and could be performed entirely through human thought with the
use of paper and pen. For example, the step of “creating a patient profile” is
accomplished by examining patient record data and making a determination
(FF 1), which can be accomplished by thinking about the information in the
patient record. The step of identifying a consultation aim, which is
identifying a goal to address “the most prominent problems with a patient”
(FF 2, 3), can be done by mentally determining the most prominent
problems identified in the patient profile and selecting from amongst those
present, using mental thought. The step of determining a list of topics can
be done by mentally examining the consultation aim and deciding on topics.
(FF 4). This is also the case with creating a teleconsultation outline and
selecting images. The Specification provides no detail for how these steps
are performed. Broadly construed, they can be performed with mental
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thought alone. Finally, the two displaying steps just output the mental
thought, and, thus, represent insignificant extra-solution activity.
The claims are, thus, directed to the mental exercise of considering
information about a patient, and mentally making a series of determinations
about the information to organize information for presentation. As such,
independent claim 19 is directed to an abstract idea.
The Federal Circuit has held that if a method can be performed by
human thought alone, or by a human using pen and paper, it is merely an
abstract idea and is not patent-eligible under § 101. CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011) (“[A] method
that can be performed by human thought alone is merely an abstract idea and
is not patent-eligible under § 101.”). Additionally, mental processes, e.g.,
identifying, selecting, and creating a profile and an outline, as recited in
claim 19, remain unpatentable even when automated to reduce the burden on
the user of what once could have been done with pen and paper. Id. at 1375
(“That purely mental processes can be unpatentable, even when performed
by a computer, was precisely the holding of the Supreme Court in
Gottschalkv. Benson, [409 U.S. 63 (1972)].”).
Turning to the second step of the Alice analysis, because we find that
claim 19 is directed to an abstract idea, the claim must include an “inventive
concept” in order to be patent-eligible, i.e., there must be an element or
combination of elements that is sufficient to ensure that the claim in practice
amounts to significantly more than the abstract idea itself.
The preamble of claim 19 indicates the method is “computer-
implemented,” but no limitation in the claim need be performed by a
computer. The Specification indicates that “any device containing a
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processor” is a computer, i.e., a generic computer component, which does
not satisfy the inventive concept. (FF 5, 6). “[A]liter Alice, there can remain
no doubt: recitation of generic computer limitations does not make an
otherwise ineligible claim patent-eligible. The bare fact that a computer
exists in the physical rather than purely conceptual realm is beside the
point.” DDR Holdings, LLCv. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed.
Cir. 2014) (internal citations and quotation marks omitted).
Nothing in claim 19 purports to improve computer functioning or
“effect an improvement in any other technology or technical field.” Alice,
134 S. Ct. at 2359. Nor does the claim solve a problem unique to the
Internet. See DDR Holdings, 773 F.3d at 1257. The claims also are not
adequately tied to “a particular machine or apparatus.” Bilski v. Kappos, 561
U.S. 593, 601 (2010).
Because claim 19 is directed to an abstract idea and nothing in the
claim adds an inventive concept, the claim is not patent-eligible under § 101.
We are unable to ascertain any meaningful distinction between
independent method claim 19 and either independent system claims 1 and
20, or independent medium claim 22; the claims all are directed to the same
underlying invention. We also are unable to ascertain that dependent claims
2—8, 10-17, 21, and 22 include additional elements that would render the
claims patent-eligible.
As the Federal Circuit has made clear “the basic character of a process
claim drawn to an abstract idea is not changed by claiming only its
performance by computers, or by claiming the process embodied in program
instructions on a computer readable medium.” See CyberSource, 654 F.3d
at 1375-76 (citing In re Abele, 684 F.2d 902 (CCPA 1982)). Therefore, we
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affirm the Examiner’s rejection of claims 1—8, 10—17, and 19—22 as
unpatentable under 35 U.S.C. § 101.
Rejection under 35 U.S.C. § 112
Appellants filed an amendment to the language of claim 22 along with
the Appeal Brief filed August 25, 2014.2 The Examiner entered the
amendment and memorialized this in an Advisory Action mailed on
September 2, 2014.
Based on the new claim language, which ends with “displaying the
images on the patient display during the teleconsultation,” the Examiner
finds the claim language indefinite, because there is no antecedent basis for
“the patient display” in the claim. (Answer 10—11).
Although this can be rectified easily, such as by changing the word
“the” to the word “a,” Appellants argue that the older version of the claim
does not contain this terminology. (Reply Br. 3). We are not persuaded by
Appellants’ argument, because there is no antecedent basis for “the patient
display.” Therefore, we affirm the rejection of independent claim 22 as
indefinite.
Rejection of Claims 1—8, 10-17, and 19—22 under 35 U.S.C. § 102(e)
Each of independent claims 1,19, 20, and 22 recite language
substantially equivalent to, as specifically recited in independent claim 19:
identifying a consultation aim using the patient profile,
2 This August Appeal Brief did not explain subject matter by referring to the
Specification, and was found defective for that reason. A supplemental
Appeal Brief was filed on October 15, 2014, after the Examiner entered the
amendment from the August filing.
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determining a list of topics using the consultation aim,
creating a teleconsultation outline using the list of topics.
Appellants argue that Porras fails to disclose the claimed identifying,
determining, and creating steps. (Appeal Br. 18—19 and 26—28). We agree.
A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference. Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628,
631 (Fed. Cir. 1987). For each of the three limitations, the Examiner asserts
that the limitations are disclosed in paragraphs 19—23 of Porras. (Answer 3,
7—9, and 14).
Porras discloses, at the cited section, permitting either a patient or
medical professional to select stored text, audio, or video content to deliver
to a patient, and permitting a patient to select from receiving content, taking
a survey, or playing a game. (FF 7—10). This cited section, however, does
not disclose all of identifying a consultation aim, determining a list of topics
using an identified aim, and creating a teleconsultation outline from
determined topics. While such items might have been an obvious inclusion
to the recited identifying, determining, and creating steps, the Examiner has
not indicated where the recited claim limitations are actually disclosed, and
does not explain that they are necessarily present through inherent disclosure
within the five cited paragraphs. For at least these three explicitly recited
limitations in each independent claim, the Examiner has, thus, failed to
establish that Porras anticipates this claim language.
We, therefore, do not sustain the rejection under 35 U.S.C. § 102(e) of
independent claims 1,19, 20, and 22, and all dependent claims, which were
rejected along with independent claims 1,19, 20, and 22.
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CONCLUSIONS OF LAW
The Examiner did not err in rejecting claims 1—8, 10—17, and 19—22
under 35 U.S.C. § 101.
The Examiner did not err in rejecting claim 22 under 35 U.S.C. § 112,
second paragraph.
The Examiner erred in rejecting claims 1—8, 10—17, and 19—22 under
35 U.S.C. § 102(e).
DECISION
The Examiner’s rejection of claims 1—8, 10—17, and 19—22 under 35
U.S.C. § 101 is AFFIRMED.
The Examiner’s rejection of claim 22 under 35 U.S.C. § 112, second
paragraph is AFFIRMED.
The Examiner’s rejection of claims 1—8, 10—17, and 19—22 under 35
U.S.C. § 102(e) is REVERSED.
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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