Ex Parte Graw et al

Patent Trial and Appeal Board

Aug 29, 2017

11454321 (P.T.A.B. Aug. 29, 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.
11/454,321 06/16/2006 An s gar Graw 2005P10476US01 6293
28524 7590 08/31/2017
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
3501 Quadrangle Blvd Ste 230
EXAMINER
LUBIN, VALERIE
Orlando, EL 32817 ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
08/31/2017 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):
ipdadmin.us@siemens.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANSGAR GRAW and XAVIER BATTLE
Appeal 2016-007601
Application 11/454,3211
Technology Center 3600
Before THU A. DANG, JOHNNY A. KUMAR, and ALEX S. YAP,
Administrative Patent Judges.
YAP, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1—5, 7—13, and 15—20, which are all of the pending
claims. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is Siemens Medical
Solutions USA, Inc. (App. Br. 1.)
Appeal 2016-007601
Application 11/454,321
STATEMENT OF THE CASE
Introduction
According to the Specification, Appellants’ invention “relates to the
monitoring of components; and more specifically the present invention
relates to the monitoring of mechanical and electrical components in a
medical imaging system.” (Specification (filed June 6, 2006) (“Spec.”) 1.)
Claim 1 is illustrative, and is reproduced (with minor formatting changes)
below:
1. A method, executed by a processor, for monitoring
mechanical and electrical components of a medical imaging
system comprising:
collecting data of operational conditions of said
mechanical and electrical components;
collecting data of operational conditions of mechanical
and electrical components of other medical imaging systems;
monitoring a plurality of different configurations of the
medical imaging system, the plurality of different configurations
including positioning of the mechanical components controlling
patient positioning in acquisition of medical diagnostic images;
storing the plurality of different configurations in a
database;
performing a remote diagnostic on the mechanical and
electrical components of the medical imaging system in each of
said plurality of different configurations;
storing a result of the diagnostic on the mechanical and
electrical components in the database;
correlating the plurality of different configurations with
the result of the diagnostic; and
updating a product life expectancy based on the step of
correlating, wherein the steps of updating and correlating are
performed to proactively make repairs on the medical imaging
system,
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creating a fixed service interval for the medical imaging
system based on the collected data of the other medical imaging
systems with similar operational conditions as the medical
imaging system, and
creating a dynamic fixed service interval for the medical
imaging system by adjusting the fixed service interval for the
medical imaging system based on feedback of the collected data
of the other medical imaging systems with similar operational
conditions as the medical imaging system;
wherein the data of operational conditions of the medical
imaging system and the data of operational conditions of other
medical imaging systems includes position data of the
mechanical components and timing of occurrence of
deterioration in the mechanical components and errors in the
electronic components that may result in inoperability of the
medical imaging system.
Rejection on Appeal
Claims 1—5, 7—13, and 15—20 stand rejected under 35 U.S.C. § 101
because the claims are not directed to patent eligible subject matter. (See
June 25, 2015 Final Action (“Final Act.”) 2-4.)
ANALYSIS
Prima Facie Case
The Examiner rejects claims 1—5, 7—13, and 15—20 under 35 U.S.C.
§101 because the claims are not directed to patent eligible subject matter.
(Final Act. 2-4.) According to the Examiner, “[cjlaims 1—5, 7—13, and 15—
20 are directed to the abstract idea of using monitoring data of a medical
imaging system and its components to compare with other systems of similar
configurations and adjust a fixed service interval. (Id. at 2—3.) Appellants
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contend that the Examiner failed to establish a prima facie case because
“[t]he final rejection has failed to apply the two[-]part test for determining
patent eligibility (see 2014 Interim Guidance on Patent Subject Matter
Eligibility, 79 Fed. Reg. 74618, Dec. 16, 2014 (“IEG”)).” (App. Br. 10-13.)
According to Appellants, “the rejection has failed to follow the analysis set
forth in the IEG.” (Id. at 10.)
Appellants, however, have not persuaded us that the Examiner erred.
In patent prosecution, a burden-shifting procedure occurs between the
Examiner and the Applicant, which is “merely a procedural device that
enables an appropriate shift of the burden of production.” In re Jung, 637
F.3d 1356, 1362 (Fed. Cir. 2011) (citation omitted). The Examiner carries
the initial burden of establishing a prima facie case of unpatentability “by
adequately explaining] the shortcomings it perceives so that the applicant is
properly notified and able to respond.” Id. The statement of the prima facie
case, however, “need not be a full exposition on every conceivable
deficiency of a claim. . . . Rather, its purpose is simply to provide sufficient
notice to the applicant to facilitate his effective submission of information.”
Hyatt v. Dudas, 492 F.3d 1365, 1370 (Fed. Cir. 2007). Here, the Examiner
performed the two-part Alice test by identifying the abstract idea (i.e., “using
monitoring data of a medical imaging system and its components to compare
with other systems of similar configurations and adjust a fixed service
interval”) and determining whether the claims amount to significantly more
that than abstract idea itself (i.e., “a database, a non-transitory computer
readable medium, a processor as recited are generic computer components
that perform generic computer functions (i.e., receiving, storing, correlating,
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updating, and outputting data) [] that are well-understood, routine, and
conventional activities known to the industry.”). (Final Act. 2—3.)
We are similarly not persuaded by Appellants’ contention that the
Examiner failed to adhere to the 2014 Interim Guidance on Patent Subject
Matter Eligibility. First, we note that the IEG Appellants point to is simply
guidance to the Examiner. Second, the Board is not bound by the IEG but
rather by legal precedence on this issue (for example, as discussed above,
the Federal Circuit’s decision in In re Jung).2 Moreover, the IEG states that:
This Interim Eligibility Guidance does not constitute substantive
rulemaking and does not have the force and effect of law. . . .
This Interim Eligibility Guidance has been developed as a matter
of internal Office management and is not intended to create any
right or benefit, substantive or procedural, enforceable by any
party against the Office. Rejections will continue to be based
upon the substantive law, and it is these rejections that are
appealable.
(Emphasis added.) For these reasons, we find that the Examiner has
established a prima facie case.
Two-Part Alice Test
Whether an invention is patent-eligible is an issue of law, which we
will review de novo. An invention is patent-eligible if it claims a “new and
useful process, machine, manufacture, or composition of matter.” 35 U.S.C.
§101. The Supreme Court, however, has long interpreted § 101 to include
implicit exceptions: “[ljaws of nature, natural phenomena, and abstract
ideas” are not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Banklnt’l, 134
S. Ct. 2347, 2354 (2014).
2 Appellants should instead petition the Director of the Office regarding their
complaint that the Examiner has failed to adhere to the IEG.
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In determining whether a claim falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court’s two-
step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296—97
(2012)). In accordance with that framework, we first determine whether the
claim is “directed to” a patent-ineligible abstract idea. See Alice, 134 S. Ct.
at 2356 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in
petitioners’ application explain the basic concept of hedging, or protecting
against risk.”); Diamond v. Diehr, 450 U.S. 175, 184 (1981) (“Analyzing
respondents’ claims according to the above statements from our cases, we
think that a physical and chemical process for molding precision synthetic
rubber products falls within the § 101 categories of possibly patentable
subject matter.”); Parker v. Flook, 437 U.S. 584, 594—595 (1978)
(“Respondent’s application simply provides a new and presumably better
method for calculating alarm limit values.”); Gottschalk v. Benson, 409 U.S.
63, 64 (1972) (“They claimed a method for converting binary-coded decimal
(BCD) numerals into pure binary numerals.”).
The patent-ineligible end of the spectrum includes fundamental
economic practices, Alice, 134 S. Ct. at 2357; Bilski, 561 U.S. at 611;
mathematical formulas, Flook, 437 U.S. at 594—95; and basic tools of
scientific and technological work, Gottschalk, 409 U.S. at 67. On the patent-
eligible side of the spectrum are physical and chemical processes, such as
curing rubber, Diamond, 450 U.S. at 184 n.7, “tanning, dyeing, making
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water-proof cloth, vulcanizing India rubber, smelting ores,” and a process
for manufacturing flour, Gottschalk, 409 U.S. at 69.
If the claim is “directed to” a patent-ineligible abstract idea, we then
consider the elements of the claim—both individually and as an ordered
combination—to assess whether the additional elements transform the nature
of the claim into a patent-eligible application of the abstract idea. Alice,
134 S. Ct. at 2355. This is a search for an “inventive concept”—an element
or combination of elements sufficient to ensure that the claim amounts to
“significantly more” than the abstract idea itself. Id.
With regard to the first step of Alice, the Examiner finds the claims
are “directed to the abstract idea of using monitoring data of a medical
imaging system and its components to compare with other systems of similar
configurations and adjust a fixed service interval.” (Final Act. 2.)
Specifically, according to the Examiner:
While the claims do not explicitly recited this abstract idea, the
concept is described by the monitoring, storing, performing,
correlating, updating, and creating steps of claim 1, for example.
This abstract idea of “using monitoring data of a medical
imaging system and its components to compare with other
systems of similar configurations and adjust a fixed service
interval” is similar to abstract ideas identified by the courts (for
example, comparing new and stored information and using rules
to identify options, and using categories to organize, store, and
transmit information) because the claimed invention similarly
performs data manipulation and analysis.
(Final Act. 2—3.) Appellants contend that the claims are not abstract because
the claims are directed to a statutory method and article of manufacture:
The pending claims are directed to such an application of a
concept to a new and useful end eligible for patent protection.
As explained above, the claimed invention provides a real world
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solution to the real world problems of medical imaging system
cost, product life expectancy, down time, component design and
selection, and reliability, by providing a method that provides
proactive monitoring and identification of mechanical
deterioration and electronic errors in expensive medical imaging
systems, so that remedial action may be taken before the system
actually becomes inoperative, thus preventing the loss of income,
inefficient use of human resources, as well as dissatisfied patients
caused by the existing problems in the prior art.
[The claimed invention] does not constitute an abstract idea but
instead describes a concept that is clearly applied to a specific
physical medical imaging system and its specific physical
components, and adjusts a service interval of the physical
medical imaging system, which is a specific instantiation of a
time at which the medical imaging system is physically serviced
to maintain its operational state.
(App. Br. 5—8, underline in original.)
Appellants have not persuaded us that the claims are directed to a
specific improvement to computer-related technology instead of use of a
computer in its ordinary capacity. Just because the claims recite physical
components does not mean that the claims are directed to a specific
improvement to the physical component. Importantly, we agree with the
Examiner’s finding that the claims, as a whole, are concerned with
collecting, monitoring, processing, and correlating data from physical
components (i.e., mechanical and electrical components) using a processor
to create service intervals:
the claims recite functions performed on a processor which
consist of collecting data about the medical imaging systems,
monitoring configurations of the medical imaging systems,
performing a remote diagnostic of one particular imaging system
and correlating the configurations with the result of the
diagnostic, which directly relates to the concept of comparing
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collected and monitored data to certain rules as well as with each
other in order to identify options of diagnosing the device and
creating service intervals, said concept being similar to the
abstract idea of comparing new and stored data and applying
rules in order to identify options, which the courts have found to
be abstract (SmartGene).
(Ans. 4.) See FairWarning IP, LLC v. Iatric Systems, Inc., 839 F.3d 1089,
1093 (Fed. Cir. 2016) (“merely presenting the results of abstract processes of
collecting and analyzing information, without more . . . , is abstract as an
ancillary part of such collection and analysis.”).
Appellants’ attempt to distinguish Diamond v. Diehr, 450 U.S. 175
(1981) misses the point. (App. Br. 8.) The Examiner cites to Diamond in
response to Appellants’ contention that “the claims are not directed to an
abstract idea and do not ‘tie-up’ the abstract idea or pre-empt others from
comparing data of two systems and using rules to identify options.”
(September 4, 2015 Advisory Action (“Adv. Act.”) 2; see also App. Br. 8.)
Although 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); see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362—
63 (Fed. Cir. 2015), cert, denied, 136 S.Ct. 701, 193 (2015) (“[Tjhatthe
claims do not preempt all price optimization or may be limited to price
optimization in the e-commerce setting do not make them any less
abstract.”). And, “[wjhere a patent’s claims are deemed only to disclose
patent ineligible subject matter under the Mayo framework, as they are in
this case, preemption concerns are fully addressed and made moot.” Ariosa,
788 F.3d at 1379.
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Appellants’ contention that “[t]he Advisory [AJction further appears
to state that an invention must set forth a ‘technical’ solution to a ‘technical’
problem in order to be eligible for patent protection” is based on a
misunderstanding of the Examiner’s position. (App. Br. 9.) Rather than
“applying the law of the European Patent Convention” as Appellants
suggest, the Examiner is merely responding to Appellants’ contention that
“the claimed invention provides a real world solution to real world problems
[because t]he solution is similarly non-technical in that it is manipulating
and planning monitoring and service schedules, which is not routed in
technology.” (Adv. Act. 2.)
Regarding step two of Alice, the Examiner finds that “the claims [do
not] amount to significantly more that than abstract idea itself’ because “a
database, a non-transitory computer readable medium, a processor as recited
are generic computer components that perform generic computer functions
(i.e., receiving, storing, correlating, updating, and outputting data) [] are
well-understood, routine, and conventional activities known to the
industry.”). (Final Act. 3.) Other than the issues discussed above,
Appellants do not provide persuasive evidence that the claim amounts to
“significantly more” than the abstract idea itself and we agree with the
Examiner’s finding that nothing in the claims adds an inventive concept that
transforms the nature of the claim into a patent-eligible application of the
abstract idea. (App. Br. 5—9; Final Act. 3; Ans. 5—6.)
For the foregoing reasons, because claims 1—5, 7—13, and 15—20 are
directed to an abstract idea and nothing in the claims adds an inventive
concept, the claims are not patent-eligible under § 101. Therefore, we
sustain the 35 U.S.C. § 101 rejection of claims 1—5, 7—13, and 15—20.
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DECISION
We affirm the decision of the Examiner to reject claims 1—5, 7—13,
and 15—20.
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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