Ex Parte Kenney et al

Patent Trials and Appeals Board

Mar 26, 2019

13606880 - (D) (P.T.A.B. Mar. 26, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/606,880
21567 7590
Wells St. John P.S.
601 W. Main Avenue
Suite 600
Spokane, WA 99201
09/07/2012
03/26/2019
FIRST NAMED INVENTOR
Howard M. Kenney
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.
DI32-004 1076
EXAMINER
LEVY,AMYM
ART UNIT PAPER NUMBER
2179
MAIL DATE DELIVERY MODE
03/26/2019 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HOWARD M. KENNEY, JEFFREY B. BUTLER, GARY L.
CRAIG, SEAN P. LASALLE, ERIC C. MUELLER,
and KAREN M. FERGUSON
Appeal2018-004961
Application 13/606,880
Technology Center 2100
Before JOHN A. JEFFERY, MARC S. HOFF, and ERIC B. CHEN,
Administrative Patent Judges.
JEFFERY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
final decision to reject claims 1-7, 11-17, 20-29, 31--44, 46, 47, and 49-58.
Claims 8-10, 18, 19, 30, 45, and 48 have been cancelled. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
Appellants' invention processes medical data. In one aspect, patient
treatment data is received from plural medical providers and stored in a
1 Appellants identify the real party in interest as Discus Analytics, LLC.
App. Br. 4.
Appeal2018-004961
Application 13/606,880
database. The data can be used to, among other things, (1) identify
appropriate treatment for a patient based on previous treatments of other
patients, and (2) demonstrate efficacy of medical treatment provided to
patients with a common medical condition. See generally Abstract; Spec.
,r,r 21-26. Claim 1 is illustrative:
1. A medical information system comprising:
a communications interface which is configured to
receive patient treatment data which regards past medical
treatment of a plurality of patients; and
storage circuitry configured to store the patient treatment
data for the plurality of patients; and
hardware processing circuitry configured to:
process the patient treatment data; and
identify one of a plurality of different treatments for use
in future medical treatment of a medical condition of a subject
patient as a result of the processing; and
wherein the patient treatment data which is processed
comprises data regarding the plurality of patients who are
patients other than the subject patient.
RELATED APPEAL
Although Appellants indicate that they are unaware of any related
appeals (see App. Br. 4, 4 7), we nonetheless decided an appeal in connection
with an ex parte reexamination of United States Patent 8,458,610 B2("'610
patent"), issued to Kenney et al. on June 4, 2013-the application of which
is a parent to the present continuation-in-part application. See Ex parte
Discus Analytics, LLC, Appeal 2019-000721 (90/013,776) (PTAB Jan. 29,
2
Appeal2018-004961
Application 13/606,880
2019) (affirming Examiner's decision to reject claims 1-13, 15-37, 39, and
41---64 of the '610 patent).
THE REJECTIONS
The Examiner rejected claims 1-7, 11-17, 20-29, 31--44, 46, 47, and
49-55 under 35 U.S.C. § 101 as directed to ineligible subject matter. Ans.
3-7.2
The Examiner rejected claims 1---6, 12, 14, 15, 20-23, 31, 32, 34--40,
and 53-58 under 35 U.S.C. § I02(b) as anticipated by Miglietta et al.(US
2008/0103833 Al; published May 1, 2008). Final Act. 10-18.
The Examiner rejected claims 7, 11, 13, 16, 17, 24, 25, and 33 under
35 U.S.C. § 103 as unpatentable over Miglietta and Kremer et al. (US
2010/0063848 Al; published Mar. 11, 2010). Final Act. 23-26.
The Examiner rejected claims 26-29, 41--44, and 49-52 under 35
U.S.C. § 103 as unpatentable over Miglietta and Banigan (US 2008/0183500
Al; published July 31, 2008). Final Act. 27-32.
The Examiner rejected claims 46 and 47 under 35 U.S.C. § 103 as
unpatentable over Miglietta, Banigan, and Kremer. Final Act. 33-34.
2 Throughout this opinion, we refer to (1) the Final Rejection mailed January
23, 2017 ("Final Act."); (2) the Appeal Brief filed August 24, 2017
(supplemented October 19, 2017 and December 4, 2017) ("App. Br."); (3)
the Examiner's Answer mailed February 9, 2018 ("Ans."); and (4) the Reply
Brief filed April 9, 2018 ("Reply Br.").
3
Appeal2018-004961
Application 13/606,880
The Examiner rejected claims 1 and 53-58 under 35 U.S.C. § 102(b)3
as anticipated by Scarlat (US 2005/0261941 Al; published Nov. 24, 2005).
Final Act. 18-22.
THE INELIGIBILITY REJECTION
The Examiner finds that the claims are directed to an abstract idea,
namely ( 1) collecting and analyzing medical information ( claims 1-7, 11-
17, 34--37, and 53-55); (2) analyzing medical information (claims 20-27,
31-33, and 38--40); (3) analyzing cost information (claims 28 and 29); and
( 4) determining and displaying a mathematical relationship (graphing)
(claims 41--44, 46, 47, and 49-52). See Ans. 3-7. The Examiner adds that
the claims do not include additional elements that add significantly more
than the abstract idea, but merely recite conventional computer functions.
Id. Based on these findings, the Examiner concludes that the claims are
ineligible under § 101. Id.
Appellants argue that the claimed invention is not directed to an
abstract idea. Reply Br. 27-54. According to Appellants, the Examiner not
only fails to account for the specific recited limitations that are not directed
to an abstract idea, but the recited limitations also add significantly more to
the purported abstract idea to render the claims eligible. See id.
3 Although the Examiner omits Section 102's subsection in the rejection's
statement (see Final Act. 18), Scarlat nonetheless qualifies as prior art under
§ 102(b ). Accordingly, we include that subsection here for clarity, and treat
the Examiner's error in this regard as harmless.
4
Appeal2018-004961
Application 13/606,880
ISSUE
Under§ 101, has the Examiner erred in rejecting claims 1-7, 11-17,
20-29, 31--44, 46, 47, and 49-55 as directed to ineligible subject matter?
This issue turns on whether the claims are directed to an abstract idea and, if
so, whether recited elements----considered individually and as an ordered
combination-transform the nature of the claims into a patent-eligible
application of that abstract idea.
PRINCIPLES OF LAW
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. See, e.g., Alice Corp. Pty. v. CLS Bank Int 'l, 573
U.S. 208,216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
we first determine what concept the claim is "directed to." See Alice, 573
U.S. at 219 ("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."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
5
Appeal2018-004961
Application 13/606,880
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219--20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes ( Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 192
( 1981) ); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 184 n.7 (quoting Corning v. Burden, 56 U.S.
(15 How.) 252, 267---68 (1854))); and manufacturing flour (Benson, 409 U.S.
at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 176; see also id. at 192 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). That
said, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. ( citing Benson and Flook); see, e.g., id. at 187 ("It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.").
6
Appeal2018-004961
Application 13/606,880
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 ( quotation marks and citation
omitted). "A claim that recites an abstract idea must include 'additional
features' to ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."' Id. (quoting Mayo, 566 U.S. at 77).
"[M]erely requir[ing] generic computer implementation[] fail[ s] to transform
that abstract idea into a patent-eligible invention." Id.
In January 2019, the USPTO published revised guidance on the
application of§ 101. See 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) ("Guidance"). Under that
guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MANUAL OF PATENT EXAMINING PROCEDURE
(MPEP) §§ 2106.05(a}-(c), (e}-(h) (9th ed. Rev. 08.2017, Jan. 2018)).
Only if a claim (1) recites a judicial exception, and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
well-understood, routine, and conventional in the field (see MPEP
§ 2106.05(d)); or
7
Appeal2018-004961
Application 13/606,880
(4) simply appends well-understood, routine, and conventional
activities previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Guidance, 84 Fed. Reg. at 56.
ANALYSIS
Claims 31-33 and 38-40: Alice/Mayo Step One
Independent claim 3 1 recites a medical data processing method that
uses hardware processing circuitry to access information regarding a patient
having a medical condition which is to be treated, where the accessed
information includes information regarding plural outcomes for the patient
corresponding to the medical condition. Using this circuitry and the
outcome information, an appropriate treatment is identified for the patient
using information regarding a previous use of the treatment upon other
patients with the medical condition and whose outcomes correspond to those
of the patient.
As the Specification's paragraph 126 explains, a management system
can store information regarding the outcomes, medications, and disease
progression or regression, and this information can be processed to, among
other things, provide guidance in treating patients who have outcomes
similar to previously-treated patients. Paragraph 128 adds that treatment
data of previous patients whose outcomes correspond to those of a new
patient can be used to select the new patient's appropriate treatment.
Turning to claim 31, we first note that the claim recites a series of
steps and, therefore, falls within the process category of§ 101. But despite
falling within this statutory category, we must still determine whether the
8
Appeal2018-004961
Application 13/606,880
claim is directed to a judicial exception, namely an abstract idea. See Alice,
573 U.S. at 217. To this end, we must determine whether (1) the claim
recites a judicial exception, and (2) fails to integrate the exception into a
practical application. See Guidance, 84 Fed. Reg. at 52-55. If both
elements are satisfied, the claim is directed to a judicial exception under the
first step of the Alice/Mayo test. See id.
In the rejection, the Examiner finds that claim 31 is directed to the
abstract idea of analyzing medical information. See Ans. 3, 6. To determine
whether a claim recites an abstract idea, we (1) identify the claim's specific
limitations that recite an abstract idea, and (2) determine whether the
identified limitations fall within certain subject matter groupings, namely (a)
mathematical concepts4; (b) certain methods of organizing human activity5;
or ( c) mental processes. 6 Here, not only could both recited steps be
performed mentally apart from the recited hardware processing circuitry,
both recited steps organize human activity by identifying an appropriate
4 Mathematical concepts include mathematical relationships, mathematical
formulas or equations, and mathematical calculations. See Guidance, 84
Fed. Reg. at 52.
5 Certain methods of organizing human activity include fundamental
economic principles or practices (including hedging, insurance, mitigating
risk); commercial or legal interactions (including agreements in the form of
contracts; legal obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior or relationships
or interactions between people (including social activities, teaching, and
following rules or instructions). See Guidance, 84 Fed. Reg. at 52.
6 Mental processes are concepts performed in the human mind including an
observation, evaluation, judgment, or opinion. See Guidance, 84 Fed. Reg.
at 52.
9
Appeal2018-004961
Application 13/606,880
treatment for a patient based on prior treatments on other patients with a
similar outcome.
That is, a physician could access information regarding (1) a patient
having a medical condition, and (2) plural outcomes corresponding to that
condition by merely thinking about that patient's condition and associated
outcomes, or recalling such information from the physician's memory based
on the physician's training and experience. Using this information, the
physician could then identify an appropriate treatment for the patient based
on prior similar treatments on other patients with similar outcomes.
Notably, this latter step could be done by the physician merely remembering
similar treatments performed on other patients.
Although the claim recites an abstract idea based on these mental
processes and methods of organizing human activity, we nevertheless must
still determine whether the abstract idea is integrated into a practical
application, namely whether the claim applies, relies on, or uses the abstract
idea in a manner that imposes a meaningful limit on the abstract idea, such
that the claim is more than a drafting effort designed to monopolize the
abstract idea. See Guidance, 84 Fed. Reg. at 54--55. To this end, we (1)
identify whether there are any additional recited elements beyond the
abstract idea, and (2) evaluate those elements individually and collectively to
determine whether they integrate the exception into a practical application.
See id.
Notably, the hardware processing circuitry is the only recited element
beyond the abstract idea, but that additional element does not integrate the
abstract idea into a practical application when reading claim 31 as a whole.
First, we are not persuaded that the claimed invention improves the
10
Appeal2018-004961
Application 13/606,880
computing devices' functionality or efficiency, or otherwise changes the
way those devices function, at least in the sense contemplated by the Federal
Circuit in Enfzsh LLC v. Microsoft Corporation, 822 F.3d 1327 (Fed. Cir.
2016), despite Appellants' arguments to the contrary (Reply Br. 30). The
claimed self-referential table in Enfzsh was a specific type of data structure
designed to improve the way a computer stores and retrieves data in
memory. Enfzsh, 822 F.3d at 1339. To the extent Appellants contend that
the claimed invention uses such a data structure to improve a computer's
functionality or efficiency, or otherwise change the way that device
functions (see Reply Br. 30), there is no persuasive evidence on this record
to substantiate such a contention.
Appellants' reliance on McRO, Inc. v. Bandai Namco Games
America, Inc., 837 F.3d 1299 (Fed. Cir. 2016) (Reply Br. 29--30) is
unavailing. There, the claimed process used a combined order of specific
rules that rendered information in a specific format that was applied to create
a sequence of synchronized, animated characters. McRO, 837 F.3d at 1315.
Notably, the recited process automatically animated characters using
particular information and techniques-an improvement over manual three-
dimensional animation techniques that was not directed to an abstract idea.
Id. at 1316.
But unlike the claimed invention in McRO that improved how the
physical display operated to produce better quality images, the claimed
invention here merely uses generic computing components to access
information and identify an appropriate treatment based on that
information-a generic computer implementation that is not only directed to
fundamental data access and analysis functions, but also does not improve a
11
Appeal2018-004961
Application 13/606,880
display mechanism as was the case in McRO. Although the claimed
invention requires computer components, it is the incorporation of those
components-not a claimed rule-----that purportedly improves the existing
process. Cf FairWarning IP, LLC v. Iatric Systems, Inc., 839 F.3d 1089,
1095 (Fed. Cir. 2016). In short, the claimed invention does not focus on
improving computers as tools, but rather certain independently abstract ideas
that use computers as tools. See Elec. Power Grp., LLC v. Alstom S.A., 830
F.3d 1350, 1354 (Fed. Cir. 2016); see also Univ. of Fla. Res. Found., Inc. v.
Gen. Elec. Co., No. 2018-1284, slip op. at 5-11 (Fed. Cir. Feb. 26, 2019)
(holding ineligible claim reciting method of integrating physiologic
treatment data that (1) converted physiologic data received from at least two
bedside machines into machine-independent data; (2) performed at least one
programmatic action involving that data; and (3) presented results from that
action upon a bedside GUI as directed to the abstract idea of collecting,
analyzing, manipulating, and displaying data); In re Meyer, 688 F.2d 789,
795-96 (CCP A 1982) (holding ineligible claims that merely partly replaced
a neurologist's thinking process with a computer).
Therefore, we do not find that the claim recites additional elements
improving (1) the computer itself, or (2) another technology or technical
field. See Guidance, 84 Fed. Reg. at 55 (citing MPEP § 2106.05(a)).
Rather, the above-noted additional element merely (1) applies the abstract
idea on a computer; (2) includes instructions to implement the abstract idea
on a computer; or (3) uses the computer as a tool to perform the abstract
idea. See Guidance, 84 Fed. Reg. at 55 (citing MPEP § 2106.05([)).
In this regard, Appellants' claimed invention is analogous to that
which the court held ineligible in Smartgene, Inc. v. Advanced Biological
12
Appeal2018-004961
Application 13/606,880
Laboratories, 555 F. App'x 950 (Fed. Cir. 2014) (unpublished). There, the
court held ineligible a claim reciting a method for guiding selection of a
therapeutic treatment regimen for a patient with a known disease or medical
condition, where the method provided patient information to a computing
device comprising ( 1) a first knowledge base with different therapeutic
treatment regimens for the disease or medical condition; (2) a second
knowledge base with expert rules for evaluating and selecting a therapeutic
treatment regimen for the disease or medical condition; and (3) a third
knowledge base with advisory information useful for treating a patient with
different constituents of said different therapeutic treatment regimens. See
Smartgene, 555 F. App'x at 951-52. A ranked listing of available
therapeutic treatment regimens for the patient was also generated, as well as
advisory information for a treatment regimen in the ranked listing based on
the patient information and expert rules. Id. at 952.
In holding this claim ineligible, the court noted that the claim did no
more than call on a "computing device," with basic functionality for
comparing stored and input data and rules, to do what doctors do routinely.
Id. at 954. The court added that the claim did not purport to identify new
computer hardware, but rather assumed the availability of physical
components for input, memory, look-up, comparison, and output. Id. at 955.
In reaching its conclusion, the court emphasized that the claim merely called
on a computer to do nothing that is even arguably an advance in physical
implementations of routine mental information-comparison and rule-
application processes. Id.
That is the case here. To the extent that Appellants contend otherwise
(see Reply Br. 27-30), we disagree. Nor is this a case where the claim
13
Appeal2018-004961
Application 13/606,880
applies a specific compound at specific doses to treat a particular medical
condition for specific patients, as was the case in Vanda Pharmaceuticals
Inc. v. West-Ward Pharmaceuticals International Limited, 887 F.3d 1117,
1121, 1136 (Fed. Cir. 2018). Unlike Vanda's claimed invention, the claim
here does not recite a treatment method that practically applies natural
relationships. See Robert W. Bahr, Recent Subject Matter Eligibility
Decision: Vanda Pharmaceuticals Inc. v. West-Ward Pharmaceuticals,
USPTO Guidance dated June 7, 2018 ("Vanda Memo."). Although
Appellants' claimed invention identifies an appropriate treatment, it does not
actually treat the patient based on that identification, let alone in a manner
analogous to the eligible treatment in Vanda.
In conclusion, although the recited functions may be beneficial by
identifying an appropriate treatment for a patient, a claim for a useful or
beneficial abstract idea is still an abstract idea. See Ariosa Diagnostics, Inc.
v. Sequenom, Inc., 788 F.3d 1371, 1379--80 (Fed. Cir. 2015).
We, therefore, agree with the Examiner that claim 31 is directed to an
abstract idea.
Claims 31-33 and 38-40: Alice/Mayo Step Two
Turning to Alice/Mayo step two, the recited elements----considered
individually and as an ordered combination----do not transform the nature of
claim 31 into a patent-eligible application of the abstract idea to ensure that
the claim amounts to significantly more than that idea. See Alice, 573 U.S.
at 221.
That the recited method uses hardware processing circuitry and
involves accessing and processing data does not change our conclusion. As
14
Appeal2018-004961
Application 13/606,880
noted above, the claimed invention merely uses generic computing
components to perform the recited abstract idea. Although Appellants
contend that using outcomes of (1) a patient having a medical condition, and
(2) other patients with that condition is not well-understood, routine, and
conventional (Reply Br. 32), these limitations are not additional elements
beyond the abstract idea, but rather are directed to the abstract idea as noted
previously. See Guidance, 84 Fed. Reg. at 56 (instructing that additional
recited element( s) should be evaluated in Alice/Mayo step two to determine
whether they (1) add specific limitation(s) that are not well-understood,
routine, and conventional in the field, or (2) simply append well-understood,
routine, and conventional activities previously known to the industry ( citing
MPEP § 2106.05(d)).
Rather, the hardware processing circuitry is the additional recited
element whose generic computing functionality is well-understood, routine,
and conventional. Accord Ans. 3 (finding that the claims' additional recited
computer elements provide conventional computer functionality that does
not add meaningful limits to practicing the abstract idea). Appellants'
arguments (Reply Br. 31-33) are inapposite to the Examiner's findings in
this regard and are, therefore, unpersuasive.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 31, and claims 32, 33, and 38--40 not argued separately with
particularity.
Claims 41 and 43: Alice/Mayo Step One
Independent claim 41 recites a medical data processing method that
( 1) uses hardware processing circuitry to access information regarding a
15
Appeal2018-004961
Application 13/606,880
subject patient being treated for a disease, where the information indicates a
level of the patient's disease activity, and (2) uses a user interface to display
a graphical indicator to convey information regarding the disease activity
level. According to the claim, two visible indications within the graphical
indicator are displayed, namely first and second visible indications
indicating that the patient's disease activity level corresponds to first and
second disease states, respectively, of the patient at different moments in the
past.
As shown in Appellants' Figure 3 reproduced below, the graphical
user interface (GUI) 30 includes a window 66 that provides a graphical
indication of scores regarding the patient. Spec. ,r 56.
FIG. 3
16
Appeal2018-004961
Application 13/606,880
Appellants' GUI 30 in Figure 3
As shown above, the window 66 includes three indicators that may be
selected according to the patient's current DAS28 score that is calculated by
the formula in paragraph 51. To this end, the DAS28 score uses data from
plural parameters including conditions of tenderness (pain) and swelling of
joints, laboratory information, and a physician's evaluation of the patient's
general health in terms of an amount of disease activity present in the patient
resulting from examination and observation of the patient. See Spec. ,r,r 48-
51, 56. The patient's DAS28 scores can also be graphed at different
moments in time in the "DAS28 Trend" window 60 in Appellants' Figure 3.
Spec. ,r 58.
In the rejection, the Examiner finds that claim 41 is directed to the
abstract idea of determining and displaying a mathematical relationship
(graphing), specifically patient information over time. See Ans. 3, 6. As
noted previously, the accessing information step could be performed
mentally apart from the recited hardware processing circuitry and, therefore,
falls in the mental processes category noted above. See Guidance, 84 Fed.
Reg. at 52. Although the displaying a graphical indicator step does not fall
in the mental processes category, it can nonetheless be performed entirely
with pen and paper apart from the recited user interface, and effectively
organizes human activity, at least with respect to the patient's disease
activity and treatment. See id. The graphical indicator step also falls in the
mathematical concepts category because it recites a mathematical
relationship between at least two discrete levels of disease activity as shown
in the DAS28 Trend window 60 in Figure 3. As shown in this figure, the
17
Appeal2018-004961
Application 13/606,880
DAS28 Trend window plots the relative DAS28 scores over time, such that
their numerical values, relative differences, and trends over time can be
discerned visually from the graph. See Spec. ,r 58. By indicating that one
score's numerical value is greater than, equal to, or less than another
score's numerical value, the graphical indicator conveys mathematical
relationships between these respective disease activity levels.
Notably, the hardware processing circuitry and the user interface are
the only recited elements beyond the abstract idea, but those additional
elements do not integrate the abstract idea into a practical application when
reading claim 41 as a whole. First, we are not persuaded that the claimed
invention improves the computing devices' functionality or efficiency, or
otherwise changes the way those devices function.
Nor is this a case, as in Trading Technologies International v. CQG,
Inc., 675 F. App'x 1001 (Fed. Cir. 2017) (unpublished), where the court held
eligible claims reciting a method for displaying market information relating
to a traded commodity where, among other things, two indicators were
displayed dynamically in bid and ask display regions, respectively, of a
graphical user interface, the regions positioned along a common static price
axis. Trading Techs., 675 F. App'x at 1002---06. The claimed invention in
that case also displayed an order entry region with locations for receiving
trade order commands, and, responsive to selecting a particular location, (1)
commodity-related trade order parameters were set, and (2) a trade order
was sent to an electronic exchange. Id. at 1003. Notably, the court held that
claimed invention did not simply display information on a graphical user
interface, but rather required a specific, structured graphical user interface
paired with prescribed functionality directly related to the interface's
18
Appeal2018-004961
Application 13/606,880
structure that addressed and resolved a specifically-identified problem in the
art and, therefore, was not directed to an abstract idea. Id. at 1004.
That is not the case here. Although the claimed invention displays a
graphical indicator in a user interface to convey information regarding the
disease activity level corresponding to different past disease states, to the
extent that Appellants contend that the claimed invention is directed to a
specific, structured graphical user interface paired with prescribed
functionality directly related to the interface's structure that addresses and
resolves a specifically-identified problem in the art as in Trading
Technologies (see Reply Br. 33-37), there is no persuasive evidence on this
record to substantiate such a contention.
Where, as here, the claimed invention merely presents the results of
collecting and analyzing information, without more ( such as identifying a
particular tool for presentation), the claimed invention is merely an ancillary
part of such collection and analysis. See Elec. Power Grp., LLC v. Alstom
S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016). Similar to the claims at issue in
Electric Power, the claimed invention here gathers, manipulates, analyzes,
and presents information of a specified content, but does not use any
particular inventive technology for performing those functions. Although
Appellants contend that the recited user interface distinguishes the claimed
invention from that in Electric Power by increasing patient treatment
efficiency (Reply Br. 36), merely reciting such generic computing
components, such as the recited user interface, does not integrate the abstract
idea into a practical application. See Alice, 573 U.S. at 223-24; see also
Fair Warning, 839 F.3d at 1096 (noting that using generic computing
components like a microprocessor or user interface do not transform an
19
Appeal2018-004961
Application 13/606,880
otherwise abstract idea into eligible subject matter); Mortgage Grader Inc. v.
First Choice Loan Services, Inc., 811 F.3d 1314, 1324--25 (Fed. Cir. 2016)
(noting that components such an "interface," "network," and "database" are
generic computer components that do not satisfy the inventive concept
requirement); see also Guidance, 84 Fed. Reg. at 55 (citing MPEP §
2106.05([)). Accord Univ. of Fla. Res. Found., slip op. at 5-11 (holding
ineligible claim reciting method of integrating physiologic treatment data
that (1) converted physiologic data received from at least two bedside
machines into machine-independent data; (2) performed at least one
programmatic action involving that data; and (3) presented results from that
action upon a bedside GUI as directed to the abstract idea of collecting,
analyzing, manipulating, and displaying data); Meyer, 688 F.2d 789, 795-96
( CCP A 1982) (holding ineligible claims that merely partly replaced a
neurologist's thinking process with a computer).
Appellants' reliance on McRO (Reply Br. 35-36) is unavailing.
There, the claimed process used a combined order of specific rules that
rendered information in a specific format that was applied to create a
sequence of synchronized, animated characters. McRO, 837 F.3d at 1315.
Notably, the recited process automatically animated characters using
particular information and techniques-an improvement over manual three-
dimensional animation techniques that was not directed to an abstract idea.
Id. at 1316.
But unlike the claimed invention in McRO that improved how the
physical display operated to produce better quality images, the claimed
invention here merely uses generic computing components to access
information and identify an appropriate treatment based on that
20
Appeal2018-004961
Application 13/606,880
information-a generic computer implementation that is not only directed to
fundamental data access and analysis functions, but also does not improve a
display mechanism as was the case in McRO. Although the claimed
invention requires computer components, it is the incorporation of those
components-not a claimed rule-----that purportedly improves the existing
process.
Therefore, we do not find that the additional elements, namely the
hardware processing circuitry and the user interface, improve ( 1) the
computer itself, or (2) another technology or technical field. See Guidance,
84 Fed. Reg. at 55 (citing MPEP § 2106.05(a)). Rather, the above-noted
additional elements merely (1) apply the abstract idea on a computer; (2)
include instructions to implement the abstract idea on a computer; or (3) use
the computer as a tool to perform the abstract idea. See Guidance, 84 Fed.
Reg. at 55 (citing MPEP § 2106.05([)). Although the recited functions may
be beneficial by providing a user interface that displays a patient's disease
activity history, a claim for a useful or beneficial abstract idea is still an
abstract idea. See Ariosa, 788 F.3d at 1379--80.
We, therefore, agree with the Examiner that claim 41 is directed to an
abstract idea.
Claims 41 and 43: Alice/Mayo Step Two
Turning to Alice/Mayo step two, the recited elements----considered
individually and as an ordered combination----do not transform the nature of
claim 41 into a patent-eligible application of the abstract idea to ensure that
the claim amounts to significantly more than that idea. See Alice, 573 U.S.
at 221.
21
Appeal2018-004961
Application 13/606,880
That the recited method uses hardware processing circuitry and a user
interface does not change our conclusion. As noted above, the claimed
invention merely uses generic computing components to perform the recited
abstract idea. We find unavailing Appellants' contention that claim 41 is
directed to significantly more than the abstract idea because "numerous
recited limitations" have ostensibly not been shown to be well-understood,
routine, or conventional, including displaying a graphical indicator and the
visible indications within the graphical indicator indicating the level of
disease activity corresponding to different disease states. Reply Br. 35.
These limitations, however, are not additional elements beyond the
abstract idea, but rather are directed to the abstract idea as noted previously.
See Guidance, 84 Fed. Reg. at 56 (instructing that additional recited
element( s) should be evaluated in Alice/Mayo step two to determine whether
they ( 1) add specific limitation( s) that are not well-understood, routine, and
conventional in the field, or (2) simply append well-understood, routine, and
conventional activities previously known to the industry ( citing MPEP
§ 2106.05(d)).
Rather, the hardware processing circuitry and the user interface are
the additional recited elements whose generic computing functionality is
well-understood, routine, and conventional. Accord Ans. 7 (finding that the
additional components, namely the hardware processing circuitry and the
user interface, perform generic computer functions routinely used in
computer applications); see also Ans. 3 (finding that the claims' additional
recited computer elements provide conventional computer functionality that
does not add meaningful limits to practicing the abstract idea). Appellants'
22
Appeal2018-004961
Application 13/606,880
arguments (Reply Br. 35-37) are inapposite to the Examiner's findings in
this regard and are, therefore, unpersuasive.
Lastly, we find unavailing Appellants' contention that the claimed
invention does not preempt the relevant technical field. See Reply Br. 35.
Where, as here, the claims cover a patent-ineligible concept, preemption
concerns "are fully addressed and made moot" by an analysis under the
Alice/Mayo framework. See Ariosa, 788 F.3d at 1379.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 41, and claim 43 not argued separately with particularity.
Claim 42: Alice/Mayo Step One
Claim 42 depends from claim 41 and adds that the accessed
information comprises information regarding an outcome measure for the
subject patient, where displaying the first and second visible indications
comprises displaying as a result of the outcome measure being within first
and second ranges of values, respectively, where the ranges correspond to
first and second disease states.
Paragraph 48 of Appellants' Specification explains that an exemplary
outcome measure is "DAS28" that uses data from plural parameters
including conditions of tenderness (pain) and swelling of joints, laboratory
information, and a physician's evaluation of the patient's general health in
terms of an amount of disease activity present in the patient resulting from
examination and observation of the patient. Notably, this passage indicates
that this particular outcome measure is exemplary, and other outcome
measures may be used in other embodiments. Spec. ,r 48.
23
Appeal2018-004961
Application 13/606,880
As shown in Appellants' Figure 3, the GUI 30 includes a window 66
that provides a graphical indication of scores regarding the patient. Spec.
,r 56. In Appellants' Figure 3, the window 66 includes three indicators that
may be selected according to the patient's current DAS28 score that is
calculated by the formula in paragraph 51. The patient's DAS28 scores can
also be graphed at different moments in time in the "DAS28 Trend" window
60 in Appellants' Figure 3. Spec. ,r 58.
In the rejection, the Examiner finds that claim 42 is directed to the
abstract idea of determining and displaying a mathematical relationship
(graphing), specifically patient information over time. See Ans. 3, 6. As
noted previously, the accessing information step could be performed
mentally apart from the recited hardware processing circuitry and, therefore,
falls in the mental processes category noted above. See Guidance, 84 Fed.
Reg. at 52. Although the displaying a graphical indicator step and its
associated visible indications does not fall in the mental processes category,
it can nonetheless be performed entirely with pen and paper apart from the
recited user interface, and effectively organizes human activity, at least with
respect to the patient's disease activity and treatment. See id. The graphical
indicator step also falls in the mathematical concepts category because it
recites a mathematical relationship between at least two discrete levels of
disease activity, namely whether they fall within a certain range of
numerical values. See Spec. ,r 56. By visibly indicating that a score's
numerical value is ( 1) greater than or equal to the lower value of a
particular range, and (2) less than or equal to the upper value of that range,
the graphical indicator conveys mathematical relationships with respect to an
outcome measure and the range's values.
24
Appeal2018-004961
Application 13/606,880
Notably, the hardware processing circuitry and the user interface are
the only recited elements beyond the abstract idea, but those additional
elements do not integrate the abstract idea into a practical application when
reading claim 41 as a whole. First, we are not persuaded that the claimed
invention improves the computing devices' functionality or efficiency, or
otherwise changes the way those devices function.
Nor is this a case, as in Trading Technologies, where the court held
eligible claims reciting a method for displaying market information relating
to a traded commodity where, among other things, two indicators were
displayed dynamically in bid and ask display regions, respectively, of a
graphical user interface, the regions positioned along a common static price
axis. Trading Techs., 675 F. App'x at 1002---06. The claimed invention in
that case also displayed an order entry region with locations for receiving
trade order commands, and, responsive to selecting a particular location, (1)
commodity-related trade order parameters were set, and (2) a trade order
was sent to an electronic exchange. Id. at 1003. Notably, the court held that
claimed invention did not simply display information on a graphical user
interface, but rather required a specific, structured graphical user interface
paired with prescribed functionality directly related to the interface's
structure that addressed and resolved a specifically-identified problem in the
art and, therefore, was not directed to an abstract idea. Id. at 1004.
That is not the case here. Although the claimed invention displays a
graphical indicator in a user interface to convey information regarding
whether an outcome measure falls within a range of values, to the extent that
Appellants contend that the claimed invention is directed to a specific,
structured graphical user interface paired with prescribed functionality
25
Appeal2018-004961
Application 13/606,880
directly related to the interface's structure that addresses and resolves a
specifically-identified problem in the art as in Trading Technologies (see
Reply Br. 44--45), there is no persuasive evidence on this record to
substantiate such a contention.
Where, as here, the claimed invention merely presents the results of
collecting and analyzing information, without more (such as identifying a
particular tool for presentation), the claimed invention is merely an ancillary
part of such collection and analysis. Elec. Power, 830 F.3d at 1354. Similar
to the claims at issue in Electric Power, the claimed invention here gathers,
manipulates, analyzes, and presents information of a specified content, but
does not use any particular inventive technology for performing those
functions. In short, merely reciting such generic computing components,
such as the recited user interface, does not integrate the abstract idea into a
practical application. See Alice, 573 U.S. at 223-24; see also Fair Warning,
839 F.3d at 1096 (noting that using generic computing components like a
microprocessor or user inteiface do not transform an otherwise abstract idea
into eligible subject matter); Mortgage Grader, 811 F.3d at 1324--25 (noting
that components such an "interface," "network," and "database" are generic
computer components that do not satisfy the inventive concept requirement);
see also Guidance, 84 Fed. Reg. at 55 (citing MPEP § 2106.05(±)).
Therefore, we do not find that the additional elements, namely the
hardware processing circuitry and the user interface, improve ( 1) the
computer itself, or (2) another technology or technical field. See Guidance
at 55 (citing MPEP § 2106.05(a)). Rather, the above-noted additional
elements merely ( 1) apply the abstract idea on a computer; (2) include
instructions to implement the abstract idea on a computer; or (3) use the
26
Appeal2018-004961
Application 13/606,880
computer as a tool to perform the abstract idea. See Guidance, 84 Fed. Reg.
at 55 (citing MPEP § 2106.05([)); see also Univ. of Fla. Res. Found., Inc. v.
Gen. Elec. Co., No. 2018-1284, slip op. at 5-11 (Fed. Cir. Feb. 26, 2019)
(holding ineligible claim reciting method of integrating physiologic
treatment data that (1) converted physiologic data received from at least two
bedside machines into machine-independent data; (2) performed at least one
programmatic action involving that data; and (3) presented results from that
action upon a bedside GUI as directed to the abstract idea of collecting,
analyzing, manipulating, and displaying data); Meyer, 688 F.2d at 795-96
(holding ineligible claims that merely partly replaced a neurologist's
thinking process with a computer).
We also find unavailing Appellants' contention that the claimed
invention does not preempt the relevant technical field. See Reply Br. 45.
Where, as here, the claims cover a patent-ineligible concept, preemption
concerns "are fully addressed and made moot" by an analysis under the
Alice/Mayo framework. See Ariosa, 788 F.3d at 1379.
In conclusion, although the recited functions may be beneficial by
providing a user interface that displays a patient's disease activity history, a
claim for a useful or beneficial abstract idea is still an abstract idea. See id.
at 1379-80.
We, therefore, agree with the Examiner that claim 42 is directed to an
abstract idea.
Claim 42: Alice/Mayo Step Two
Turning to Alice/Mayo step two, the recited elements----considered
individually and as an ordered combination----do not transform the nature of
27
Appeal2018-004961
Application 13/606,880
claim 42 into a patent-eligible application of the abstract idea to ensure that
the claim amounts to significantly more than that idea. See Alice, 573 U.S.
at 221.
That the recited method uses hardware processing circuitry and a user
interface does not change our conclusion. As noted above, the claimed
invention merely uses generic computing components to perform the recited
abstract idea. We find unavailing Appellants' contention that claim 42 is
directed to significantly more than the abstract idea because the recited
limitations have ostensibly not been shown to be well-understood, routine,
or conventional, namely display of the first or second visible indications as a
result of the outcome measure being within respective ranges of values,
where the values correspond to disease states. Reply Br. 45.
These limitations, however, are not additional elements beyond the
abstract idea, but rather are directed to the abstract idea as noted previously.
See Guidance, 84 Fed. Reg. at 56 (instructing that additional recited
element( s) should be evaluated in Alice/Mayo step two to determine whether
they ( 1) add specific limitation( s) that are not well-understood, routine, and
conventional in the field, or (2) simply append well-understood, routine, and
conventional activities previously known to the industry ( citing MPEP
§ 2106.05(d)).
Rather, the hardware processing circuitry and the user interface are
the additional recited elements whose generic computing functionality is
well-understood, routine, and conventional. Accord Ans. 7 (finding that the
additional components, namely the hardware processing circuitry and the
user interface, perform generic computer functions routinely used in
computer applications); see also Ans. 3 (finding that the claims' additional
28
Appeal2018-004961
Application 13/606,880
recited computer elements provide conventional computer functionality that
does not add meaningful limits to practicing the abstract idea). Appellants'
arguments (Reply Br. 45) are inapposite to the Examiner's findings in this
regard and are, therefore, unpersuasive.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 42.
Claims 44, 46, and 49-51: Alice/Mayo Step One
Independent claim 44 recites a medical data processing method that
uses hardware processing circuitry to access (1) first information indicating
a level of a patient's disease activity at plural moments in time in the past,
and (2) second information regarding treatment of the patient for the disease
at those moments in time. A user interface is used to display a graphical
representation of the first information indicating the level of disease activity
with respect to the second information regarding treating the patient for the
disease, and displaying in the graphical representation (1) the patient's past
moments in time, and (2) the first and second information with respect to
those moments.
As shown in Appellants' Figure 10 reproduced below, trends of
patient treatment data are shown in one graph 140, where a line 144
connects outcome measure values ascertained at different moments in time
to show a trend of the patient's disease over time, and line 146 shows a
medication taken by the patient over time. Spec. ,r 106.
29
Appeal2018-004961
Application 13/606,880
FIG.10
.... /4()
Graph 140 in Appellants' Figure 10
As the Specification's paragraph 107 explains, physicians can use the
graph 140 to make future decisions regarding the patient's treatment.
In the rejection, the Examiner finds that claim 44 is directed to the
abstract idea of determining and displaying a mathematical relationship
(graphing). See Ans. 3, 7. As noted previously, the accessing information
steps could be performed mentally apart from the recited hardware
processing circuitry and, therefore, fall in the mental processes category
noted above. See Guidance, 84 Fed. Reg. at 52. Although the displaying
steps do not fall in the mental processes category, they can nonetheless be
performed entirely with pen and paper apart from the recited user interface,
and effectively organize human activity, at least with respect to the patient's
disease activity and treatment. See id. The display steps also fall in the
mathematical concepts category because they recite a mathematical
relationship between different levels of disease activity and treatment as
30
Appeal2018-004961
Application 13/606,880
shown in Figure 10 above. As shown in this figure, values associated with
relative DAS28 scores and a particular treatment are plotted over time, such
that their numerical values, relative differences, and trends over time can be
discerned visually from the graph. See Spec. ,r,r 106--07. By indicating that
a numerical value for a DAS28 score is greater than, equal to, or less than
another score's numerical value, the graphical indicator conveys
mathematical relationships between these respective disease activity levels.
Similar mathematical relationships are conveyed for the values associated
with a particular treatment in Appellants' Figure 10.
Notably, the hardware processing circuitry and the user interface are
the only recited elements beyond the abstract idea, but those additional
elements do not integrate the abstract idea into a practical application when
reading claim 41 as a whole. First, we are not persuaded that the claimed
invention improves the computing devices' functionality or efficiency, or
otherwise changes the way those devices function.
Nor is this a case, as in Trading Technologies, where the court held
eligible claims reciting a method for displaying market information relating
to a traded commodity where, among other things, two indicators were
displayed dynamically in bid and ask display regions, respectively, of a
graphical user interface, the regions positioned along a common static price
axis. Trading Techs., 675 F. App'x at 1002---06. The claimed invention in
that case also displayed an order entry region with locations for receiving
trade order commands, and, responsive to selecting a particular location, (1)
commodity-related trade order parameters were set, and (2) a trade order
was sent to an electronic exchange. Id. at 1003. Notably, the court held that
claimed invention did not simply display information on a graphical user
31
Appeal2018-004961
Application 13/606,880
interface, but rather required a specific, structured graphical user interface
paired with prescribed functionality directly related to the interface's
structure that addressed and resolved a specifically-identified problem in the
art and, therefore, was not directed to an abstract idea. Id. at 1004.
That is not the case here. Although the claimed invention displays a
graphical indicator in a user interface to convey information regarding the
disease activity level corresponding to different past disease states, to the
extent that Appellants contend that the claimed invention is directed to a
specific, structured graphical user interface paired with prescribed
functionality directly related to the interface's structure that addresses and
resolves a specifically-identified problem in the art as in Trading
Technologies (see Reply Br. 33-37), there is no persuasive evidence on this
record to substantiate such a contention.
Where, as here, the claimed invention merely presents the results of
collecting and analyzing information, without more ( such as identifying a
particular tool for presentation), the claimed invention is merely an ancillary
part of such collection and analysis. Elec. Power, 830 F.3d at 1354. Similar
to the claims at issue in Electric Power, the claimed invention here gathers,
manipulates, analyzes, and presents information of a specified content, but
does not use any particular inventive technology for performing those
functions. To the extent that Appellants contend that the recited user
interface distinguishes the claimed invention from that in Electric Power
with respect to the displayed information (see Reply Br. 37-38), we
disagree, for merely reciting generic computing components, such as the
recited user interface, does not integrate the abstract idea into a practical
application. See Alice, 573 U.S. at 223-24; see also Fair Warning, 839 F.3d
32
Appeal2018-004961
Application 13/606,880
at 1096 (noting that using generic computing components like a
microprocessor or user interface do not transform an otherwise abstract idea
into eligible subject matter); Mortgage Grader, 811 F.3d at 1324--25 (noting
that components such an "interface," "network," and "database" are generic
computer components that do not satisfy the inventive concept requirement);
see also Guidance, 84 Fed. Reg. at 55 (citing MPEP § 2106.05(±)).
Therefore, we do not find that the additional elements, namely the
hardware processing circuitry and the user interface, improve (1) the
computer itself, or (2) another technology or technical field. See Guidance,
84 Fed. Reg. at 55 (citing MPEP § 2106.05(a)). Rather, the above-noted
additional elements merely (1) apply the abstract idea on a computer; (2)
include instructions to implement the abstract idea on a computer; or (3) use
the computer as a tool to perform the abstract idea. See Guidance, 84 Fed.
Reg. at 55 (citing MPEP § 2106.05(±)); see also Univ. of Fla. Res. Found.,
Inc. v. Gen. Elec. Co., No. 2018-1284, slip op. at 5-11 (Fed. Cir. Feb. 26,
2019) (holding ineligible claim reciting method of integrating physiologic
treatment data that (1) converted physiologic data received from at least two
bedside machines into machine-independent data; (2) performed at least one
programmatic action involving that data; and (3) presented results from that
action upon a bedside GUI as directed to the abstract idea of collecting,
analyzing, manipulating, and displaying data); Meyer, 688 F.2d at 795-96
(holding ineligible claims that merely partly replaced a neurologist's
thinking process with a computer).
We also find unavailing Appellants' contention that the claimed
invention does not preempt the relevant technical field. See Reply Br. 3 8.
Where, as here, the claims cover a patent-ineligible concept, preemption
33
Appeal2018-004961
Application 13/606,880
concerns "are fully addressed and made moot" by an analysis under the
Alice/Mayo framework. See Ariosa, 788 F.3d at 1379.
In conclusion, although the recited functions may be beneficial by
providing a user interface that displays a patient's disease activity and
treatment history, a claim for a useful or beneficial abstract idea is still an
abstract idea. See id. at 1379--80.
We, therefore, agree with the Examiner that claim 44 is directed to an
abstract idea.
Claims 44, 46, and 49--51: Alice/Mayo Step Two
Turning to Alice/Mayo step two, the recited elements----considered
individually and as an ordered combination----do not transform the nature of
claim 44 into a patent-eligible application of the abstract idea to ensure that
the claim amounts to significantly more than that idea. See Alice, 573 U.S.
at 221.
That the recited method uses hardware processing circuitry and a user
interface does not change our conclusion. As noted above, the claimed
invention merely uses generic computing components to perform the recited
abstract idea. We find unavailing Appellants' contention that claim 44 is
directed to significantly more than the abstract idea because "numerous
recited limitations" have ostensibly not been shown to be well-understood,
routine, or conventional, including displaying first information indicating the
patient's disease activity level with respect to second information regarding
treatment of the disease, where the first and second information is displayed
with respect to plural moments in time. Reply Br. 39.
34
Appeal2018-004961
Application 13/606,880
These limitations, however, are not additional elements beyond the
abstract idea, but rather are directed to the abstract idea as noted previously.
See Guidance, 84 Fed. Reg. at 56 (instructing that additional recited
element( s) should be evaluated in Alice/Mayo step two to determine whether
they ( 1) add specific limitation( s) that are not well-understood, routine, and
conventional in the field, or (2) simply append well-understood, routine, and
conventional activities previously known to the industry ( citing MPEP
§ 2106.05(d)).
Rather, the hardware processing circuitry and the user interface are
the additional recited elements whose generic computing functionality is
well-understood, routine, and conventional. Accord Ans. 7 (finding that the
recited hardware processing circuitry and user interface elements do not add
significantly more to the abstract idea); see also Ans. 3 (finding that the
claims' additional recited computer elements provide conventional computer
functionality that does not add meaningful limits to practicing the abstract
idea). Appellants' arguments (Reply Br. 38-39) are inapposite to the
Examiner's findings in this regard and are, therefore, unpersuasive.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 44, and claims 46 and 49-51 not argued separately with particularity.
Claim 47: Alice/Mayo Step One
Claim 4 7 depends from claim 46 that depends from independent claim
41. Claim 46 recites that the information regarding the patient's treatment
includes a medicine used by the patient. Claim 4 7 adds that the graphical
representation shows a time period of the medicine's use and corresponding
values of the first information comprising different values of an outcome
35
Appeal2018-004961
Application 13/606,880
measure which indicate different disease activity levels at different moments
in time over the time period.
As shown in Appellants' Figure 10, trends of patient treatment data
are shown in one graph 140, where a line 144 connects outcome measure
values ascertained at different moments in time to show a trend of the
patient's disease over time, and line 146 shows a medication taken by the
patient over time. Spec. ,r 106. As the Specification's paragraph 107
explains, physicians can use the graph 140 to make future decisions
regarding the patient's treatment.
In the rejection, the Examiner finds that claim 4 7 is directed to the
abstract idea of determining and displaying a mathematical relationship
(graphing). See Ans. 3, 7.
As noted previously, the accessing information steps could be
performed mentally apart from the recited hardware processing circuitry
and, therefore, fall in the mental processes category noted above. See
Guidance, 84 Fed. Reg. at 52. Although the displaying steps do not fall in
the mental processes category, they can nonetheless be performed entirely
with pen and paper apart from the recited user interface, and effectively
organize human activity, at least with respect to the patient's disease activity
and treatment. See id.
The display steps also fall in the mathematical concepts category
because they recite a mathematical relationship between different levels of
disease activity and treatment as shown in Figure 10 above. As shown in
this figure, values associated with relative DAS28 scores and a particular
treatment are plotted over time, such that their numerical values, relative
differences, and trends over time can be discerned visually from the graph.
36
Appeal2018-004961
Application 13/606,880
See Spec. ,r,r 106--07. By indicating that a numerical value for a DAS28
score is greater than, equal to, or less than another score's numerical value,
the graphical indicator conveys mathematical relationships between these
respective disease activity levels. Similar mathematical relationships are
conveyed for the values associated with a particular treatment in Appellants'
Figure 10.
Notably, the hardware processing circuitry and the user interface are
the only recited elements beyond the abstract idea, but those additional
elements do not integrate the abstract idea into a practical application when
reading claim 41 as a whole. First, we are not persuaded that the claimed
invention improves the computing devices' functionality or efficiency, or
otherwise changes the way those devices function.
Nor is this a case, as in Trading Technologies, where the court held
eligible claims reciting a method for displaying market information relating
to a traded commodity where, among other things, two indicators were
displayed dynamically in bid and ask display regions, respectively, of a
graphical user interface, the regions positioned along a common static price
axis. Trading Techs., 675 F. App'x at 1002---06. The claimed invention in
that case also displayed an order entry region with locations for receiving
trade order commands, and, responsive to selecting a particular location, (1)
commodity-related trade order parameters were set, and (2) a trade order
was sent to an electronic exchange. Id. at 1003. Notably, the court held that
claimed invention did not simply display information on a graphical user
interface, but rather required a specific, structured graphical user interface
paired with prescribed functionality directly related to the interface's
37
Appeal2018-004961
Application 13/606,880
structure that addressed and resolved a specifically-identified problem in the
art and, therefore, was not directed to an abstract idea. Id. at 1004.
That is not the case here. Although the claimed invention displays a
graphical indicator in a user interface to convey information regarding the
disease activity level corresponding to different past disease states, to the
extent that Appellants contend that the claimed invention is directed to a
specific, structured graphical user interface paired with prescribed
functionality directly related to the interface's structure that addresses and
resolves a specifically-identified problem in the art as in Trading
Technologies (see Reply Br. 46-4 7), there is no persuasive evidence on this
record to substantiate such a contention.
Where, as here, the claimed invention merely presents the results of
collecting and analyzing information, without more ( such as identifying a
particular tool for presentation), the claimed invention is merely an ancillary
part of such collection and analysis. Elec. Power, 830 F.3d at 1354. Similar
to the claims at issue in Electric Power, the claimed invention here gathers,
manipulates, analyzes, and presents information of a specified content, but
does not use any particular inventive technology for performing those
functions. To the extent that Appellants contend that the recited user
interface distinguishes the claimed invention from that in Electric Power
with respect to the displayed information (see Reply Br. 37-38), we
disagree, for merely reciting generic computing components, such as the
recited user interface, does not integrate the abstract idea into a practical
application. See Alice, 573 U.S. at 223-24; see also Fair Warning, 839 F.3d
at 1096 (noting that using generic computing components like a
microprocessor or user inteiface do not transform an otherwise abstract idea
38
Appeal2018-004961
Application 13/606,880
into eligible subject matter); Mortgage Grader, 811 F.3d at 1324--25 (noting
that components such an "interface," "network," and "database" are generic
computer components that do not satisfy the inventive concept requirement);
see also Guidance, 84 Fed. Reg. at 55 (citing MPEP § 2106.05(±)); Univ. of
Fla. Res. Found., Inc. v. Gen. Elec. Co., No. 2018-1284, slip op. at 5-11
(Fed. Cir. Feb. 26, 2019) (holding ineligible claim reciting method of
integrating physiologic treatment data that (1) converted physiologic data
received from at least two bedside machines into machine-independent data;
(2) performed at least one programmatic action involving that data; and (3)
presented results from that action upon a bedside GUI as directed to the
abstract idea of collecting, analyzing, manipulating, and displaying data);
Meyer, 688 F.2d at 795-96 (holding ineligible claims that merely partly
replaced a neurologist's thinking process with a computer).
Therefore, we do not find that the additional elements, namely the
hardware processing circuitry and the user interface, improve (1) the
computer itself, or (2) another technology or technical field. See Guidance,
84 Fed. Reg. at 55 (citing MPEP § 2106.05(a)). Rather, the above-noted
additional elements merely (1) apply the abstract idea on a computer; (2)
include instructions to implement the abstract idea on a computer; or (3) use
the computer as a tool to perform the abstract idea. See Guidance, 84 Fed.
Reg. at 55 (citing MPEP § 2106.05(±)).
We also find unavailing Appellants' contention that the claimed
invention does not preempt the relevant technical field. See Reply Br. 46-
47. Where, as here, the claims cover a patent-ineligible concept, preemption
concerns "are fully addressed and made moot" by an analysis under the
Alice/Mayo framework. See Ariosa, 788 F.3d at 1379.
39
Appeal2018-004961
Application 13/606,880
In conclusion, although the recited functions may be beneficial by
providing a user interface that displays a patient's disease activity and
treatment history, a claim for a useful or beneficial abstract idea is still an
abstract idea. See id. at 1379--80.
We, therefore, agree with the Examiner that claim 4 7 is directed to an
abstract idea.
Claim 47: Alice/Mayo Step Two
Turning to Alice/Mayo step two, the recited elements----considered
individually and as an ordered combination----do not transform the nature of
claim 47 into a patent-eligible application of the abstract idea to ensure that
the claim amounts to significantly more than that idea. See Alice, 573 U.S.
at 221.
That the recited method uses hardware processing circuitry and a user
interface does not change our conclusion. As noted above, the claimed
invention merely uses generic computing components to perform the recited
abstract idea. We find unavailing Appellants' contention that claim 4 7 is
directed to significantly more than the abstract idea because the limitations
reciting the graphical representation showing a time period of the medicine's
use and corresponding values of the first information comprising different
values of an outcome measure which indicate different disease activity
levels at different moments in time over the time period have ostensibly not
been shown to be well-understood, routine, or conventional. Reply Br. 47.
These limitations, however, are not additional elements beyond the
abstract idea, but rather are directed to the abstract idea as noted previously.
See Guidance, 84 Fed. Reg. at 56 (instructing that additional recited
40
Appeal2018-004961
Application 13/606,880
element( s) should be evaluated in Alice/Mayo step two to determine whether
they ( 1) add specific limitation( s) that are not well-understood, routine, and
conventional in the field, or (2) simply append well-understood, routine, and
conventional activities previously known to the industry ( citing MPEP
§ 2106.0S(d)).
Rather, the hardware processing circuitry and the user interface are
the additional recited elements whose generic computing functionality is
well-understood, routine, and conventional. Accord Ans. 7 (finding that the
recited hardware processing circuitry and user interface elements do not add
significantly more to the abstract idea); see also Ans. 3 (finding that the
claims' additional recited computer elements provide conventional computer
functionality that does not add meaningful limits to practicing the abstract
idea). Appellants' arguments (Reply Br. 47) are inapposite to the
Examiner's findings in this regard and are, therefore, unpersuasive.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 47.
Claim 52: Alice/Mayo Step One
Claim 52 depends from claim 44 and adds that the graphical
representation depicts trends of at least one of progression and regression of
disease activity over time relative to the patient's treatment.
As shown in Appellants' Figure 10, trends of patient treatment data
are shown in one graph 140, where a line 144 connects outcome measure
values ascertained at different moments in time to show a trend of the
patient's disease over time, and line 146 shows a medication taken by the
patient over time. Spec. ,r 106. As the Specification's paragraph 107
41
Appeal2018-004961
Application 13/606,880
explains, physicians can use the graph 140 to make future decisions
regarding the patient's treatment. According to paragraph 141, trend data
regarding plural patient examinations improve procedures associated with
typical day-to-day clinical examinations where clinicians rarely determine
significant progressive changes in various monitored parameters over time.
In the rejection, the Examiner finds that claim 52 is directed to the
abstract idea of determining and displaying a mathematical relationship
(graphing). See Ans. 3, 7.
As noted previously, the accessing information steps could be
performed mentally apart from the recited hardware processing circuitry
and, therefore, fall in the mental processes category noted above. See
Guidance, 84 Fed. Reg. at 52. Although the displaying steps do not fall in
the mental processes category, they can nonetheless be performed entirely
with pen and paper apart from the recited user interface, and effectively
organize human activity, at least with respect to the patient's disease activity
and treatment. See id.
The display steps also fall in the mathematical concepts category
because they recite a mathematical relationship between different levels of
disease activity and treatment as shown in Figure 10 above. As shown in
this figure, values associated with relative DAS28 scores and a particular
treatment are plotted over time, such that their numerical values, relative
differences, and trends over time can be discerned visually from the graph.
See Spec. ,r,r 106--07. By indicating that a numerical value for a DAS28
score is greater than, equal to, or less than another score's numerical value,
the graphical indicator conveys mathematical relationships between these
respective disease activity levels. Similar mathematical relationships are
42
Appeal2018-004961
Application 13/606,880
conveyed for the values associated with a particular treatment in Appellants'
Figure 10.
Notably, the hardware processing circuitry and the user interface are
the only recited elements beyond the abstract idea, but those additional
elements do not integrate the abstract idea into a practical application when
reading claim 41 as a whole. First, we are not persuaded that the claimed
invention improves the computing devices' functionality or efficiency, or
otherwise changes the way those devices function.
Nor is this a case, as in Trading Technologies, where the court held
eligible claims reciting a method for displaying market information relating
to a traded commodity where, among other things, two indicators were
displayed dynamically in bid and ask display regions, respectively, of a
graphical user interface, the regions positioned along a common static price
axis. Trading Techs., 675 F. App'x at 1002---06. The claimed invention in
that case also displayed an order entry region with locations for receiving
trade order commands, and, responsive to selecting a particular location, (1)
commodity-related trade order parameters were set, and (2) a trade order
was sent to an electronic exchange. Id. at 1003. Notably, the court held that
claimed invention did not simply display information on a graphical user
interface, but rather required a specific, structured graphical user interface
paired with prescribed functionality directly related to the interface's
structure that addressed and resolved a specifically-identified problem in the
art and, therefore, was not directed to an abstract idea. Id. at 1004.
That is not the case here. Although the claimed invention displays a
graphical indicator in a user interface to convey information regarding the
disease activity level corresponding to different past disease states, to the
43
Appeal2018-004961
Application 13/606,880
extent that Appellants contend that the claimed invention is directed to a
specific, structured graphical user interface paired with prescribed
functionality directly related to the interface's structure that addresses and
resolves a specifically-identified problem in the art as in Trading
Technologies (see Reply Br. 48), there is no persuasive evidence on this
record to substantiate such a contention.
Where, as here, the claimed invention merely presents the results of of
collecting and analyzing information, without more (such as identifying a
particular tool for presentation), the claimed invention is merely an ancillary
part of such collection and analysis. Elec. Power, 830 F.3d at 1354. Similar
to the claims at issue in Electric Power, the claimed invention here gathers,
manipulates, analyzes, and presents information of a specified content, but
does not use any particular inventive technology for performing those
functions. To the extent that Appellants contend that the recited user
interface distinguishes the claimed invention from that in Electric Power
with respect to the displayed information (see Reply Br. 37-38), we
disagree, for merely reciting generic computing components, such as the
recited user interface, does not integrate the abstract idea into a practical
application. See Alice, 573 U.S. at 223-24; see also Fair Warning, 839 F.3d
at 1096 (noting that using generic computing components like a
microprocessor or user inteiface do not transform an otherwise abstract idea
into eligible subject matter); Mortgage Grader, 811 F.3d at 1324--25 (noting
that components such an "interface," "network," and "database" are generic
computer components that do not satisfy the inventive concept requirement);
see also Guidance, 84 Fed. Reg. at 55 (citing MPEP § 2106.05(±)); Univ. of
Fla. Res. Found., Inc. v. Gen. Elec. Co., No. 2018-1284, slip op. at 5-11
44
Appeal2018-004961
Application 13/606,880
(Fed. Cir. Feb. 26, 2019) (holding ineligible claim reciting method of
integrating physiologic treatment data that (1) converted physiologic data
received from at least two bedside machines into machine-independent data;
(2) performed at least one programmatic action involving that data; and (3)
presented results from that action upon a bedside GUI as directed to the
abstract idea of collecting, analyzing, manipulating, and displaying data);
Meyer, 688 F.2d at 795-96 (holding ineligible claims that merely partly
replaced a neurologist's thinking process with a computer).
Therefore, we do not find that the additional elements, namely the
hardware processing circuitry and the user interface, improve ( 1) the
computer itself, or (2) another technology or technical field. See Guidance,
84 Fed. Reg. at 55 (citing MPEP § 2106.05(a)). Rather, the above-noted
additional elements merely (1) apply the abstract idea on a computer; (2)
include instructions to implement the abstract idea on a computer; or (3) use
the computer as a tool to perform the abstract idea. See Guidance, 84 Fed.
Reg. at 55 (citing MPEP § 2106.05([)).
We also find unavailing Appellants' contention that the claimed
invention does not preempt the relevant technical field. See Reply Br. 48.
Where, as here, the claims cover a patent-ineligible concept, preemption
concerns "are fully addressed and made moot" by an analysis under the
Alice/Mayo framework. See Ariosa, 788 F.3d at 1379.
In conclusion, although the recited functions may be beneficial by
providing a user interface that displays a patient's disease activity and
treatment history, a claim for a useful or beneficial abstract idea is still an
abstract idea. See id. at 1379-80.
45
Appeal2018-004961
Application 13/606,880
We, therefore, agree with the Examiner that claim 52 is directed to an
abstract idea.
Claim 52: Alice/Mayo Step Two
Turning to Alice/Mayo step two, the recited elements----considered
individually and as an ordered combination----do not transform the nature of
claim 52 into a patent-eligible application of the abstract idea to ensure that
the claim amounts to significantly more than that idea. See Alice, 573 U.S.
at 221.
That the recited method uses hardware processing circuitry and a user
interface does not change our conclusion. As noted above, the claimed
invention merely uses generic computing components to perform the recited
abstract idea. We find unavailing Appellants' contention that claim 52 is
directed to significantly more than the abstract idea because the limitations
reciting the graphical representation depicts trends of at least one of
progression and regression of disease activity over time relative to the
patient's treatment have ostensibly not been shown to be well-understood,
routine, or conventional. Reply Br. 48--49.
These limitations, however, are not additional elements beyond the
abstract idea, but rather are directed to the abstract idea as noted previously.
See Guidance, 84 Fed. Reg. at 56 (instructing that additional recited
element( s) should be evaluated in Alice/Mayo step two to determine whether
they ( 1) add specific limitation( s) that are not well-understood, routine, and
conventional in the field, or (2) simply append well-understood, routine, and
conventional activities previously known to the industry ( citing MPEP
§ 2106.05(d)).
46
Appeal2018-004961
Application 13/606,880
Rather, the hardware processing circuitry and the user interface are
the additional recited elements whose generic computing functionality is
well-understood, routine, and conventional. Accord Ans. 7 (finding that the
recited hardware processing circuitry and user interface elements do not add
significantly more to the abstract idea); see also Ans. 3 (finding that the
claims' additional recited computer elements provide conventional computer
functionality that does not add meaningful limits to practicing the abstract
idea). Appellants' arguments (Reply Br. 48--49) are inapposite to the
Examiner's findings in this regard and are, therefore, unpersuasive.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 52.
Claims 1-7, 11-15, 34-37, 53, 54, and 56-58: Alice/Mayo Step One
Independent claim 1 recites (1) a communications interface
configured to receive patient treatment data regarding past medical treatment
of plural patients; (2) storage circuitry configured to store the patient
treatment data; and (3) hardware processing circuitry configured to (a)
process the patient treatment data, and (b) identify one of plural different
treatments for use in a future medical treatment of a patient's medical
condition as a result of the processing, where the patient treatment data
comprises data regarding patients other than the subject patient.
As the Specification's paragraph 126 explains, information regarding
outcomes, medications, and disease progression or regression may be (1)
stored in management system 101, and (2) processed to provide, among
other things, guidance in treating patients who have outcomes similar to
previously-treated patients. To this end, patient sub-groups can be defined
47
Appeal2018-004961
Application 13/606,880
having common outcomes so that treatment data for patients in a particular
sub-group may be beneficial in determining future treatment for a new
patient with the disease. Spec. ,r,r 127-128, 130. For example, a medication
that produced the best results or was most effective in treating other patients
in the identified sub-group would be identified as a potential treatment for a
new patient with a similar condition. See Spec. ,r 130.
Turning to claim 1, we note that despite the recited medical
information system falling into the apparatus category of Section 101, the
Examiner nonetheless finds that claim 1 is directed to the abstract idea of
collecting and analyzing medical information. See Ans. 3--4.
First, not only can the hardware processing circuitry's recited
functions could be performed mentally apart from the recited hardware
processing circuitry, these functions also organize human activity by
identifying a particular future treatment for a patient based on processing
patient treatment data that includes data regarding other patients.
That is, a physician could process patient treatment data by merely
thinking about various patients' conditions and associated treatments, or
recalling such information from the physician's memory based on the
physician's training and experience. Using this information, the physician
could then identify an appropriate treatment for the patient based on prior
similar treatments on other patients. Notably, this latter step could be done
by the physician merely remembering similar treatments performed on other
patients.
Notably, the communications interface, storage circuitry, and
hardware processing circuitry are the only recited elements beyond the
abstract idea, but these additional elements do not integrate the abstract idea
48
Appeal2018-004961
Application 13/606,880
into a practical application when reading claim 1 as a whole. First, we are
not persuaded that the claimed invention improves the computing devices'
functionality or efficiency, or otherwise changes the way those devices
function. Although the claimed invention requires computer components, it
is the incorporation of those components-not a claimed rule-that
purportedly improves the existing process. Cf FairWarning, 839 F.3d at
1095. In short, the claimed invention does not focus on improving
computers as tools, but rather certain independently abstract ideas that use
computers as tools. See Elec. Power, 830 F.3d at 1354.
Not only are the recited functions of the communications interface and
storage circuitry, namely to receive and store patient treatment data,
implemented via generic computing components to achieve those ends, but
they are also data gathering functions that constitute insignificant extra-
solution activity that is insufficient to integrate the abstract idea into a
practical application. See In re Bilski, 545 F.3d 943, 963 (Fed. Cir. 2008)
(en bane), aff'd on other grounds, 561 U.S. 593 (2010) (characterizing data
gathering steps as insignificant extra-solution activity); see also Guidance,
84 Fed. Reg. at 55 (citing MPEP § 2106.05(g)).
Therefore, we do not find that the claim recites additional elements
improving (1) the computer itself, or (2) another technology or technical
field. See Guidance, 84 Fed. Reg. at 55 (citing MPEP § 2106.05(a)).
Rather, the above-noted additional element merely (1) applies the abstract
idea on a computer; (2) includes instructions to implement the abstract idea
on a computer; or (3) uses the computer as a tool to perform the abstract
idea. See Guidance, 84 Fed. Reg. at 55 (citing MPEP § 2106.05([)); see also
Univ. of Fla. Res. Found., Inc. v. Gen. Elec. Co., No. 2018-1284, slip op. at
49
Appeal2018-004961
Application 13/606,880
5-11 (Fed. Cir. Feb. 26, 2019) (holding ineligible claim reciting method of
integrating physiologic treatment data that (1) converted physiologic data
received from at least two bedside machines into machine-independent data;
(2) performed at least one programmatic action involving that data; and (3)
presented results from that action upon a bedside GUI as directed to the
abstract idea of collecting, analyzing, manipulating, and displaying data);
Meyer, 688 F.2d at 795-96 (holding ineligible claims that merely partly
replaced a neurologist's thinking process with a computer).
In this regard, Appellants' claimed invention is analogous to that
which the court held ineligible in Smartgene. There, the court held
ineligible a claim reciting a method for guiding selection of a therapeutic
treatment regimen for a patient with a known disease or medical condition,
where the method provided patient information to a computing device
comprising (1) a first knowledge base with different therapeutic treatment
regimens for the disease or medical condition; (2) a second knowledge base
with expert rules for evaluating and selecting a therapeutic treatment
regimen for the disease or medical condition; and (3) a third knowledge base
with advisory information useful for treating a patient with different
constituents of said different therapeutic treatment regimens. See
Smartgene, 555 F. App'x at 951-52. A ranked listing of available
therapeutic treatment regimens for the patient was also generated, as well as
advisory information for a treatment regimen in the ranked listing based on
the patient information and expert rules. Id. at 952.
In holding this claim ineligible, the court noted that the claim did no
more than call on a "computing device," with basic functionality for
comparing stored and input data and rules, to do what doctors do routinely.
50
Appeal2018-004961
Application 13/606,880
Id. at 954. The court added that the claim did not purport to identify new
computer hardware, but rather assumed the availability of physical
components for input, memory, look-up, comparison, and output. Id. at 955.
In reaching its conclusion, the court emphasized that the claim merely called
on a computer to do nothing that is even arguably an advance in physical
implementations of routine mental information-comparison and rule-
application processes. Id.
That is the case here. To the extent that Appellants contend otherwise
(see Reply Br. 51-52), we disagree. Nor is this a case where the claim
applies a specific compound at specific doses to treat a particular medical
condition for specific patients, as was the case in Vanda Pharmaceuticals.
Unlike Vanda's claimed invention, the claim here does not recite a treatment
method that practically applies natural relationships. See Vanda Memo.
Although Appellants' claimed invention identifies an appropriate treatment,
it does not actually treat the patient based on that identification, let alone in
a manner analogous to the eligible treatment in Vanda.
In conclusion, although the recited functions may be beneficial by
identifying patient treatment, a claim for a useful or beneficial abstract idea
is still an abstract idea. See Ariosa, 788 F.3d at 1379-80.
We, therefore, agree with the Examiner that claim 1 is directed to an
abstract idea.
Claims 1-7, 11-15, 34-37, 53, 54, and 56-58: Alice/Mayo Step Two
Turning to Alice/Mayo step two, the recited elements----considered
individually and as an ordered combination----do not transform the nature of
claim 1 into a patent-eligible application of the abstract idea to ensure that
51
Appeal2018-004961
Application 13/606,880
the claim amounts to significantly more than that idea. See Alice, 573 U.S.
at 221.
That the recited method uses a (1) communications interface, (2)
storage circuitry, and (3) hardware processing circuitry does not change our
conclusion. As noted above, the claimed invention merely uses generic
computing components to perform the recited abstract idea. We find
unavailing Appellants' contention that claim 1 is directed to significantly
more than the abstract idea. Reply Br. 52. Appellants reason that because
the physician chooses the treatment in the cited Miglietta reference unlike
the hardware processing circuitry of the claimed invention, the hardware
processing circuitry's identifying one of plural treatments is ostensibly not
well-understood, routine, or conventional. Id.
These limitations, however, are not additional elements beyond the
abstract idea, but rather are directed to the abstract idea as noted previously.
See Guidance, 84 Fed. Reg. at 56 (instructing that additional recited
element( s) should be evaluated in Alice/Mayo step two to determine whether
they ( 1) add specific limitation( s) that are not well-understood, routine, and
conventional in the field, or (2) simply append well-understood, routine, and
conventional activities previously known to the industry ( citing MPEP
§ 2106.05(d)).
Rather, the (1) communications interface, (2) storage circuitry, and (3)
hardware processing circuitry are the additional recited elements whose
generic computing functionality is well-understood, routine, and
conventional. Accord Ans. 4 (finding that the recited additional
components, namely (1) the communications interface, (2) storage circuitry,
and (3) hardware processing circuitry, perform generic computer functions
52
Appeal2018-004961
Application 13/606,880
routinely used in computer applications)); see also Ans. 3 (finding that the
claims' additional recited computer elements provide conventional computer
functionality that does not add meaningful limits to practicing the abstract
idea). Appellants' arguments (Reply Br. 52) are inapposite to the
Examiner's findings in this regard and are, therefore, unpersuasive.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 1, and claims 2-7, 11-15, 34--37, 53, 54, and 56-58 not argued
separately with particularity.
Claims 16 and 17: Alice/Mayo Step One
Claim 16 depends from claim 1 and adds processing circuitry at one
of plural medical providers configured to display a graphical representation
of human anatomy, and at least some of the patient treatment data is inputted
by interaction of medical personnel with that representation.
As the Specification's paragraph 39 explains, the GUI in Figure 3 can
include a representation 32 of human anatomy including selectable portions
34 that correspond to different anatomical portions ( e.g., joints). These
selectable portions may be selected by inputs from medical personnel using,
for example, a mouse or other interactive pointing device. Spec. ,r 39.
In the rejection, the Examiner finds that dependent claim 16 is
directed to the same abstract idea as that of independent claim 1, namely
collecting and analyzing medical information. See Ans. 3--4.
As noted previously, independent claim 1 recites subject matter falling
into the categories of mental processes and organizing human activity, at
least with respect to a patient's medical condition and treatment. Notably,
the recited processing circuitry of claim 16 is the only recited element
53
Appeal2018-004961
Application 13/606,880
beyond the abstract idea, but that additional element does not integrate the
abstract idea into a practical application when reading claim 16 as a whole.
First, we are not persuaded that the claimed invention improves the
computing devices' functionality or efficiency, or otherwise changes the
way those devices function. Although the claimed invention requires
computer components, it is the incorporation of those components-not a
claimed rule-----that purportedly improves the existing process. Cf
FairWarning, 839 F.3d at 1095. In short, the claimed invention does not
focus on improving computers as tools, but rather certain independently
abstract ideas that use computers as tools. See Elec. Power, 830 F.3d at
1354; see also Fair Warning, 839 F.3d at 1096 (noting that using generic
computing components like a microprocessor or user interface do not
transform an otherwise abstract idea into eligible subject matter); Univ. of
Fla. Res. Found., Inc. v. Gen. Elec. Co., No. 2018-1284, slip op. at 5-11
(Fed. Cir. Feb. 26, 2019) (holding ineligible claim reciting method of
integrating physiologic treatment data that (1) converted physiologic data
received from at least two bedside machines into machine-independent data;
(2) performed at least one programmatic action involving that data; and (3)
presented results from that action upon a bedside GUI as directed to the
abstract idea of collecting, analyzing, manipulating, and displaying data);
Meyer, 688 F.2d at 795-96 (holding ineligible claims that merely partly
replaced a neurologist's thinking process with a computer).
Second, the processing circuitry's recited functions, namely to display
a graphical representation of the human anatomy, where at least some
patient treatment is inputted by interacting with this representation, are not
only implemented via generic computing components to achieve these ends,
54
Appeal2018-004961
Application 13/606,880
but they are also data gathering functions that constitute insignificant extra-
solution activity that is insufficient to integrate the abstract idea into a
practical application. See Bilski, 545 F.3d at 963; see also Guidance, 84
Fed. Reg. at 55 (citing MPEP § 2106.05(g)).
Therefore, despite Appellants' arguments to the contrary (Reply Br.
39-41 ), we do not find that the claim recites additional elements improving
(1) the computer itself, or (2) another technology or technical field. See
Guidance, 84 Fed. Reg. at 55 (citing MPEP § 2106.05(a)). Rather, the
above-noted additional element merely (1) applies the abstract idea on a
computer; (2) includes instructions to implement the abstract idea on a
computer; or (3) uses the computer as a tool to perform the abstract idea.
See Guidance, 84 Fed. Reg. at 55 (citing MPEP § 2106.05(±)). Although the
processing circuitry's recited functions may be beneficial by providing a
user interface that enables data input by interacting with a human anatomy
representation, a claim for a useful or beneficial abstract idea is still an
abstract idea. See Ariosa, 788 F.3d at 1379--80.
We, therefore, agree with the Examiner that claim 16 is directed to an
abstract idea.
Claims 16 and 17: Alice/Mayo Step Two
Turning to Alice/Mayo step two, the recited elements----considered
individually and as an ordered combination----do not transform the nature of
claim 16 into a patent-eligible application of the abstract idea to ensure that
the claim amounts to significantly more than that idea. See Alice, 573 U.S.
at 221.
55
Appeal2018-004961
Application 13/606,880
That the recited method uses processing circuitry does not change our
conclusion. As noted above, the claimed invention merely uses generic
computing components to perform the recited abstract idea. We find
unavailing Appellants' contention that claim 1 is directed to significantly
more than the abstract idea because idea because various limitations have
ostensibly not been shown to be well-understood, routine, or conventional,
including displaying a graphical representation of human anatomy and data
input via interaction with that representation. Reply Br. 41--42.
These limitations, however, are not additional elements beyond the
abstract idea, but rather are directed to the abstract idea as noted previously.
See Guidance, 84 Fed. Reg. at 56 (instructing that additional recited
element( s) should be evaluated in Alice/Mayo step two to determine whether
they ( 1) add specific limitation( s) that are not well-understood, routine, and
conventional in the field, or (2) simply append well-understood, routine, and
conventional activities previously known to the industry ( citing MPEP
§ 2106.05(d)).
Rather, the processing circuitry is the additional recited element
whose generic computing functionality is well-understood, routine, and
conventional. Accord Ans. 3 (finding that the claims' additional recited
computer elements provide conventional computer functionality that does
not add meaningful limits to practicing the abstract idea). Appellants'
arguments (Reply Br. 41--42) are inapposite to the Examiner's findings in
this regard and are, therefore, unpersuasive.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 16, and claim 1 7 not argued separately with particularity.
56
Appeal2018-004961
Application 13/606,880
Claim 55: Alice/Mayo Step One
Claim 5 5 depends from claim 1 and adds that the hardware processing
circuitry is configured to (1) use information regarding the subject patient to
identify a sub-group of the patients other than the subject patient, and (2)
process the patient treatment data of only the sub-group to identify the one
treatment for use in future medical treatment of the patient's medical
condition.
As the Specification's paragraph 126 explains, information regarding
outcomes, medications, and disease progression or regression may be (1)
stored in management system 101, and (2) processed to provide, among
other things, guidance in treating patients who have outcomes similar to
previously-treated patients. To this end, patient sub-groups can be defined
having common outcomes so that treatment data for patients in a particular
sub-group may be beneficial in determining future treatment for a new
patient with the disease. Spec. ,r,r 127-130. For example, a medication that
produced the best results or was most effective in treating other patients in
the identified sub-group would be identified as a potential treatment for a
new patient with a similar condition. See Spec. ,r 130.
In the rejection, the Examiner finds that dependent claim 55 is
directed to the same abstract idea as that of independent claim 1, namely
collecting and analyzing medical information. See Ans. 3--4.
As noted previously, independent claim 1 recites subject matter falling
into the categories of mental processes and organizing human activity, at
least with respect to a patient's medical condition and treatment.
First, not only can the functions recited in claim 55 be performed
mentally apart from the recited hardware processing circuitry, these
57
Appeal2018-004961
Application 13/606,880
functions also organize human activity by identifying a particular future
treatment for a patient based on processing patient treatment data that
includes data regarding other patients.
That is, a physician could process patient treatment data by merely
thinking about various patients' conditions and associated treatments, or
recalling such information from the physician's memory based on the
physician's training and experience. Using this information, the physician
could then identify an appropriate treatment for the patient based on prior
similar treatments on other patients-including those in particular groups
and sub-groups. Notably, this latter step could be done by the physician
merely remembering similar treatments performed on other patients.
We find unavailing Appellants' contention that the hardware
processing circuitry's function ostensibly cannot be performed mentally
because the number of possible sub-group combinations grows
exponentially with the number of outcomes as noted in the Specification's
paragraph 129. Reply Br. 50. First, because Appellants provide no evidence
on this record to support this contention, such unsubstantiated conclusory
statements have little probative value. See In re Geisler, 116 F.3d 1465,
1470 (Fed. Cir. 1997); see also Enzo Biochem, Inc. v. Gen-Probe, Inc., 424
F.3d 1276, 1284 (Fed. Cir. 2005) ("Attorney argument is no substitute for
evidence.").
Second, Appellants' reliance on the Federal Circuit's decision in
Synopsis, Incorporated v. Mentor Graphics Corporation, 839 F.3d 1139
(Fed. Cir. 2016) is misplaced. There, the court held ineligible a claim
reciting a method for converting a hardware-independent user description of
a logic circuit that (1) converted flow-control and directive statements into
58
Appeal2018-004961
Application 13/606,880
an assignment condition for asynchronous load and data functions, and (2)
generated a level-sensitive latch when these conditions were non-constant,
where these conditions were particular signals of a flow-through latch. See
Synopsis, 839 F.3d at 1146-52. In reaching its ineligibility conclusion, the
court noted that the claim was directed to a representation of a single
specific hardware component that could be-and was-performed mentally
or with pencil and paper. Id. at 1148. Notably, the court emphasized that
the complexity of implementing software or the level of detail in the
Specification could not transform a claim that recites only an abstract
concept into a patent-eligible invention. Id. at 1149.
That is the case here. To the extent that Appellants contend otherwise
(see Reply Br. 50-51 ), we disagree.
Notably, the communications interface, storage circuitry, and
hardware processing circuitry are the only recited elements beyond the
abstract idea, but these additional elements do not integrate the abstract idea
into a practical application when reading claim 55 as a whole. First, we are
not persuaded that the claimed invention improves the computing devices'
functionality or efficiency, or otherwise changes the way those devices
function. Although the claimed invention requires computer components, it
is the incorporation of those components-not a claimed rule-that
purportedly improves the existing process. Cf FairWarning, 839 F.3d at
1095. In short, the claimed invention does not focus on improving
computers as tools, but rather certain independently abstract ideas that use
computers as tools. See Elec. Power, 830 F.3d at 1354; see also Univ. of
Fla. Res. Found., Inc. v. Gen. Elec. Co., No. 2018-1284, slip op. at 5-11
(Fed. Cir. Feb. 26, 2019) (holding ineligible claim reciting method of
59
Appeal2018-004961
Application 13/606,880
integrating physiologic treatment data that (1) converted physiologic data
received from at least two bedside machines into machine-independent data;
(2) performed at least one programmatic action involving that data; and (3)
presented results from that action upon a bedside GUI as directed to the
abstract idea of collecting, analyzing, manipulating, and displaying data);
Meyer, 688 F.2d at 795-96 (holding ineligible claims that merely partly
replaced a neurologist's thinking process with a computer).
Therefore, we do not find that the claim recites additional elements
improving (1) the computer itself, or (2) another technology or technical
field. See Guidance, 84 Fed. Reg. at 55 (citing MPEP § 2106.05(a)).
Rather, the above-noted additional element merely ( 1) applies the abstract
idea on a computer; (2) includes instructions to implement the abstract idea
on a computer; or (3) uses the computer as a tool to perform the abstract
idea. See Guidance, 84 Fed. Reg. at 55 (citing MPEP § 2106.05([)).
In this regard, Appellants' claimed invention is analogous to that
which the court held ineligible in Smartgene. There, the court held
ineligible a claim reciting a method for guiding selection of a therapeutic
treatment regimen for a patient with a known disease or medical condition,
where the method provided patient information to a computing device
comprising (1) a first knowledge base with different therapeutic treatment
regimens for the disease or medical condition; (2) a second knowledge base
with expert rules for evaluating and selecting a therapeutic treatment
regimen for the disease or medical condition; and (3) a third knowledge base
with advisory information useful for treating a patient with different
constituents of said different therapeutic treatment regimens. See
Smartgene, 555 F. App'x at 951-52. A ranked listing of available
60
Appeal2018-004961
Application 13/606,880
therapeutic treatment regimens for the patient was also generated, as well as
advisory information for a treatment regimen in the ranked listing based on
the patient information and expert rules. Id. at 952.
In holding this claim ineligible, the court noted that the claim did no
more than call on a "computing device," with basic functionality for
comparing stored and input data and rules, to do what doctors do routinely.
Id. at 954. The court added that the claim did not purport to identify new
computer hardware, but rather assumed the availability of physical
components for input, memory, look-up, comparison, and output. Id. at 955.
In reaching its conclusion, the court emphasized that the claim merely called
on a computer to do nothing that is even arguably an advance in physical
implementations of routine mental information-comparison and rule-
application processes. Id.
That is the case here. To the extent that Appellants contend otherwise
(see Reply Br. 49--51 ), we disagree. Nor is this a case where the claim
applies a specific compound at specific doses to treat a particular medical
condition for specific patients, as was the case in Vanda Pharmaceuticals.
Unlike Vanda's claimed invention, the claim here does not recite a treatment
method that practically applies natural relationships. See Vanda Memo.
Although Appellants' claimed invention identifies an appropriate treatment,
it does not actually treat the patient based on that identification, let alone in
a manner analogous to the eligible treatment in Vanda.
In conclusion, although the recited functions may be beneficial by
identifying patient treatment, a claim for a useful or beneficial abstract idea
is still an abstract idea. See Ariosa, 788 F.3d at 1379--80.
61
Appeal2018-004961
Application 13/606,880
We, therefore, agree with the Examiner that claim 55 is directed to an
abstract idea.
Claim 55: Alice/Mayo Step Two
Turning to Alice/Mayo step two, the recited elements----considered
individually and as an ordered combination----do not transform the nature of
claim 55 into a patent-eligible application of the abstract idea to ensure that
the claim amounts to significantly more than that idea. See Alice, 573 U.S.
at 221.
That the recited method uses processing circuitry does not change our
conclusion. As noted above, the claimed invention merely uses generic
computing components to perform the recited abstract idea. We find
unavailing Appellants' contention that claim 55 is directed to significantly
more than the abstract idea because "numerous limitations" have ostensibly
not been shown to be well-understood, routine, or conventional, including
(1) using information regarding the subject patient to identify a sub-group of
the patients other than the subject patient, and (2) processing the patient
treatment data of only the sub-group to identify the one treatment for use in
future medical treatment. Reply Br. 51.
These limitations, however, are not additional elements beyond the
abstract idea, but rather are directed to the abstract idea as noted previously.
See Guidance, 84 Fed. Reg. at 56 (instructing that additional recited
element( s) should be evaluated in Alice/Mayo step two to determine whether
they ( 1) add specific limitation( s) that are not well-understood, routine, and
conventional in the field, or (2) simply append well-understood, routine, and
62
Appeal2018-004961
Application 13/606,880
conventional activities previously known to the industry ( citing MPEP
§ 2106.05(d)).
Rather, the communications interface, storage circuitry, and hardware
processing circuitry are the additional recited elements whose generic
computing functionality is well-understood, routine, and conventional.
Accord Ans. 3 (finding that the claims' additional recited computer elements
provide conventional computer functionality that does not add meaningful
limits to practicing the abstract idea). Appellants' arguments (Reply Br. 51)
are inapposite to the Examiner's findings in this regard and are, therefore,
unpersuasive.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 55.
Claims 20-23, 26, and 27: Alice/Mayo Step One
Independent claim 20 recites a medical data processing method that
uses hardware processing circuitry to ( 1) access patient treatment data
regarding past medical treatment provided to plural patients other than a
subject patient who have a common medical condition, and (2) process the
data to identify at least one of plural different medications for use in future
treatment of the subject patient's common medical condition.
As the Specification's paragraph 126 explains, information regarding
outcomes, medications, and disease progression or regression may be (1)
stored in management system 101, and (2) processed to provide, among
other things, guidance in treating patients who have outcomes similar to
previously-treated patients. To this end, patient sub-groups can be defined
having common outcomes so that treatment data for patients in a particular
63
Appeal2018-004961
Application 13/606,880
sub-group may be beneficial in determining future treatment for a new
patient with the disease. Spec. ,r,r 127-128, 130. For example, a medication
that produced the best results or was most effective in treating other patients
in the identified sub-group would be identified as a potential treatment for a
new patient with a similar condition. See Spec. ,r 130.
Turning to claim 20, we note that despite the recited limitations falling
into the method category of Section 101, the Examiner nonetheless finds that
the claim is directed to the abstract idea of analyzing medical information.
See Ans. 3, 5.
First, not only can the recited functions be performed mentally apart
from the recited hardware processing circuitry, these functions also organize
human activity by identifying a particular future treatment for a patient
based on processing patient treatment data that includes data regarding other
patients.
That is, a physician could access and process patient treatment data by
merely thinking about various patients' conditions and associated treatments,
or recalling such information from the physician's memory based on the
physician's training and experience. Using this information, the physician
could then identify an appropriate medication-based treatment for the patient
based on prior similar treatments on other patients. Notably, this latter step
could be done by the physician merely remembering similar treatments
performed on other patients.
Notably, the hardware processing circuitry is the only recited element
beyond the abstract idea, but this additional element does not integrate the
abstract idea into a practical application when reading claim 20 as a whole.
First, we are not persuaded that the claimed invention improves the
64
Appeal2018-004961
Application 13/606,880
computing devices' functionality or efficiency, or otherwise changes the
way those devices function. Although the claimed invention requires
computer components, it is the incorporation of those components-not a
claimed rule-that purportedly improves the existing process. Cf
FairWarning, 839 F.3d at 1095. In short, the claimed invention does not
focus on improving computers as tools, but rather certain independently
abstract ideas that use computers as tools. See Elec. Power, 830 F.3d at
1354; see also Univ. of Fla. Res. Found., Inc. v. Gen. Elec. Co., No. 2018-
1284, slip op. at 5-11 (Fed. Cir. Feb. 26, 2019) (holding ineligible claim
reciting method of integrating physiologic treatment data that (1) converted
physiologic data received from at least two bedside machines into machine-
independent data; (2) performed at least one programmatic action involving
that data; and (3) presented results from that action upon a bedside GUI as
directed to the abstract idea of collecting, analyzing, manipulating, and
displaying data); Meyer, 688 F.2d at 795-96 (holding ineligible claims that
merely partly replaced a neurologist's thinking process with a computer).
Not only is the patient treatment data accessed via generic computing
components to achieve that end, but this limitation is a data gathering
function that constitutes insignificant extra-solution activity that is
insufficient to integrate the abstract idea into a practical application. See
Bilski, 545 F .3d at 943 ( characterizing data gathering steps as insignificant
extra-solution activity); see also Guidance, 84 Fed. Reg. at 55 (citing MPEP
§ 2106.05(g)).
Therefore, we do not find that the claim recites additional elements
improving (1) the computer itself, or (2) another technology or technical
field. See Guidance, 84 Fed. Reg. at 55 (citing MPEP § 2106.05(a)).
65
Appeal2018-004961
Application 13/606,880
Rather, the above-noted additional element merely (1) applies the abstract
idea on a computer; (2) includes instructions to implement the abstract idea
on a computer; or (3) uses the computer as a tool to perform the abstract
idea. See Guidance, 84 Fed. Reg. at 55 (citing MPEP § 2106.05([)).
In this regard, Appellants' claimed invention is analogous to that
which the court held ineligible in Smartgene. There, the court held
ineligible a claim reciting a method for guiding selection of a therapeutic
treatment regimen for a patient with a known disease or medical condition,
where the method provided patient information to a computing device
comprising (1) a first knowledge base with different therapeutic treatment
regimens for the disease or medical condition; (2) a second knowledge base
with expert rules for evaluating and selecting a therapeutic treatment
regimen for the disease or medical condition; and (3) a third knowledge base
with advisory information useful for treating a patient with different
constituents of said different therapeutic treatment regimens. See
Smartgene, 555 F. App'x at 951-52. A ranked listing of available
therapeutic treatment regimens for the patient was also generated, as well as
advisory information for a treatment regimen in the ranked listing based on
the patient information and expert rules. Id. at 952.
In holding this claim ineligible, the court noted that the claim did no
more than call on a "computing device," with basic functionality for
comparing stored and input data and rules, to do what doctors do routinely.
Id. at 954. The court added that the claim did not purport to identify new
computer hardware, but rather assumed the availability of physical
components for input, memory, look-up, comparison, and output. Id. at 955.
In reaching its conclusion, the court emphasized that the claim merely called
66
Appeal2018-004961
Application 13/606,880
on a computer to do nothing that is even arguably an advance in physical
implementations of routine mental information-comparison and rule-
application processes. Id.
That is the case here. To the extent that Appellants contend otherwise
(see Reply Br. 52-53), we disagree. Nor is this a case where the claim
applies a specific compound at specific doses to treat a particular medical
condition for specific patients, as was the case in Vanda Pharmaceuticals.
Unlike Vanda's claimed invention, the claim here does not recite a treatment
method that practically applies natural relationships. See Vanda Memo.
Although Appellants' claimed invention identifies an appropriate treatment,
it does not actually treat the patient based on that identification, let alone in
a manner analogous to the eligible treatment in Vanda.
In conclusion, although the recited functions may be beneficial by
identifying medication-based treatment, a claim for a useful or beneficial
abstract idea is still an abstract idea. See Ariosa, 788 F.3d at 1379-80.
We, therefore, agree with the Examiner that claim 20 is directed to an
abstract idea.
Claims 20-23, 26, and 27: Alice/Mayo Step Two
Turning to Alice/Mayo step two, the recited elements----considered
individually and as an ordered combination----do not transform the nature of
claim 20 into a patent-eligible application of the abstract idea to ensure that
the claim amounts to significantly more than that idea. See Alice, 573 U.S.
at 221.
That the recited method uses hardware processing circuitry does not
change our conclusion. As noted above, the claimed invention merely uses
67
Appeal2018-004961
Application 13/606,880
generic computing components to perform the recited abstract idea. We find
unavailing Appellants' contention that claim 20 is directed to significantly
more than the abstract idea. Reply Br. 53. Appellants reason that because
the physician chooses the treatment in the cited Miglietta reference unlike
the hardware processing circuitry of the claimed invention, the hardware
processing circuitry's identifying one of plural medications is ostensibly not
well-understood, routine, or conventional. Id.
These limitations, however, are not additional elements beyond the
abstract idea, but rather are directed to the abstract idea as noted previously.
See Guidance, 84 Fed. Reg. at 56 (instructing that additional recited
element( s) should be evaluated in Alice/Mayo step two to determine whether
they ( 1) add specific limitation( s) that are not well-understood, routine, and
conventional in the field, or (2) simply append well-understood, routine, and
conventional activities previously known to the industry ( citing MPEP
§ 2106.05(d)).
Rather, the hardware processing circuitry is the additional recited
element whose generic computing functionality is well-understood, routine,
and conventional. Accord Ans. 3 (finding that the claims' additional recited
computer elements provide conventional computer functionality that does
not add meaningful limits to practicing the abstract idea). Appellants'
arguments (Reply Br. 53) are inapposite to the Examiner's findings in this
regard and are, therefore, unpersuasive.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 20, and claims 21-23, 26, and 27 not argued separately with
particularity.
68
Appeal2018-004961
Application 13/606,880
Claims 24 and 25: Alice/Mayo Step One
Claim 24 depends from claim 20 and adds that (1) accessing
comprises accessing information regarding the patients' outcomes and
different medications used, and (2) processing comprises comparing
effectiveness of different ones of the medications with respect to treating
patients having a common outcome to identify at least one of the different
medications for use in future treatment.
As the Specification's paragraph 126 explains, information regarding
outcomes, medications, and disease progression or regression may be (1)
stored in management system 101, and (2) processed to provide, among
other things, guidance in treating patients who have outcomes similar to
previously-treated patients. To this end, patient sub-groups can be defined
having common outcomes so that treatment data for patients in a particular
sub-group may be beneficial in determining future treatment for a new
patient with the disease. Spec. ,r,r 127-128, 130. For example, a medication
that produced the best results or was most effective in treating other patients
in the identified sub-group would be identified as a potential treatment for a
new patient with a similar condition. See Spec. ,r 130.
Turning to claim 24, we note that despite the recited limitations falling
into the method category of Section 101, the Examiner nonetheless finds that
the claim is directed to the abstract idea of analyzing medical information.
See Ans. 3--4.
First, not only can the recited functions be performed mentally apart
from the recited hardware processing circuitry, these functions also organize
human activity by identifying a particular future treatment for a patient
69
Appeal2018-004961
Application 13/606,880
based on processing patient treatment data that includes data regarding other
patients.
That is, a physician could process patient treatment data by comparing
various medications' effectiveness by merely thinking about various
patients' conditions and associated treatments, or recalling such information
from the physician's memory based on the physician's training and
experience. Using this information, the physician could then identify an
appropriate treatment for the patient based on prior similar treatments on
other patients. Notably, this latter step could be done by the physician
merely remembering similar treatments performed on other patients.
Notably, the hardware processing circuitry is the only recited element
beyond the abstract idea, but this additional element does not integrate the
abstract idea into a practical application when reading claim 24 as a whole.
First, we are not persuaded that the claimed invention improves the
computing devices' functionality or efficiency, or otherwise changes the
way those devices function. Although the claimed invention requires
computer components, it is the incorporation of those components-not a
claimed rule-that purportedly improves the existing process. Cf
FairWarning, 839 F.3d at 1095. In short, the claimed invention does not
focus on improving computers as tools, but rather certain independently
abstract ideas that use computers as tools. See Elec. Power, 830 F.3d at
1354; see also Univ. of Fla. Res. Found., Inc. v. Gen. Elec. Co., No. 2018-
1284, slip op. at 5-11 (Fed. Cir. Feb. 26, 2019) (holding ineligible claim
reciting method of integrating physiologic treatment data that (1) converted
physiologic data received from at least two bedside machines into machine-
independent data; (2) performed at least one programmatic action involving
70
Appeal2018-004961
Application 13/606,880
that data; and (3) presented results from that action upon a bedside GUI as
directed to the abstract idea of collecting, analyzing, manipulating, and
displaying data); Meyer, 688 F.2d at 795-96 (holding ineligible claims that
merely partly replaced a neurologist's thinking process with a computer).
Not only are the recited functions of the hardware processing circuitry
implemented via generic computing components to achieve those ends, but
accessing patient treatment data is also a data gathering function that
constitutes insignificant extra-solution activity that is insufficient to integrate
the abstract idea into a practical application. See Bilski, 545 F.3d at 963
( characterizing data gathering steps as insignificant extra-solution activity);
see also Guidance, 84 Fed. Reg. at 55 (citing MPEP § 2106.05(g)).
Therefore, we do not find that the claim recites additional elements
improving (1) the computer itself, or (2) another technology or technical
field. See Guidance, 84 Fed. Reg. at 55 (citing MPEP § 2106.05(a)).
Rather, the above-noted additional element merely ( 1) applies the abstract
idea on a computer; (2) includes instructions to implement the abstract idea
on a computer; or (3) uses the computer as a tool to perform the abstract
idea. See Guidance, 84 Fed. Reg. at 55 (citing MPEP § 2106.05([)).
In this regard, Appellants' claimed invention is analogous to that
which the court held ineligible in Smartgene. There, the court held
ineligible a claim reciting a method for guiding selection of a therapeutic
treatment regimen for a patient with a known disease or medical condition,
where the method provided patient information to a computing device
comprising (1) a first knowledge base with different therapeutic treatment
regimens for the disease or medical condition; (2) a second knowledge base
with expert rules for evaluating and selecting a therapeutic treatment
71
Appeal2018-004961
Application 13/606,880
regimen for the disease or medical condition; and (3) a third knowledge base
with advisory information useful for treating a patient with different
constituents of said different therapeutic treatment regimens. See
Smartgene, 555 F. App'x at 951-52. A ranked listing of available
therapeutic treatment regimens for the patient was also generated, as well as
advisory information for a treatment regimen in the ranked listing based on
the patient information and expert rules. Id. at 952.
In holding this claim ineligible, the court noted that the claim did no
more than call on a "computing device," with basic functionality for
comparing stored and input data and rules, to do what doctors do routinely.
Id. at 954. The court added that the claim did not purport to identify new
computer hardware, but rather assumed the availability of physical
components for input, memory, look-up, comparison, and output. Id. at 955.
In reaching its conclusion, the court emphasized that the claim merely called
on a computer to do nothing that is even arguably an advance in physical
implementations of routine mental information-comparison and rule-
application processes. Id.
That is the case here. To the extent that Appellants contend otherwise
(see Reply Br. 42--43), we disagree. Nor is this a case where the claim
applies a specific compound at specific doses to treat a particular medical
condition for specific patients, as was the case in Vanda Pharmaceuticals.
Unlike Vanda's claimed invention, the claim here does not recite a treatment
method that practically applies natural relationships. See Vanda Memo.
Although Appellants' claimed invention identifies an appropriate treatment,
it does not actually treat the patient based on that identification, let alone in
a manner analogous to the eligible treatment in Vanda.
72
Appeal2018-004961
Application 13/606,880
We also find unavailing Appellants' contention that the claimed
invention does not preempt the relevant technical field. See Reply Br. 43.
Where, as here, the claims cover a patent-ineligible concept, preemption
concerns "are fully addressed and made moot" by an analysis under the
Alice/Mayo framework. See Ariosa, 788 F.3d at 1379.
In conclusion, although the recited functions may be beneficial by
identifying patient treatment, a claim for a useful or beneficial abstract idea
is still an abstract idea. See id. at 1379--80.
We, therefore, agree with the Examiner that claim 24 is directed to an
abstract idea.
Claims 24 and 25: Alice/Mayo Step Two
Turning to Alice/Mayo step two, the recited elements----considered
individually and as an ordered combination----do not transform the nature of
claim 24 into a patent-eligible application of the abstract idea to ensure that
the claim amounts to significantly more than that idea. See Alice, 573 U.S.
at 221.
That the recited method uses hardware processing circuitry does not
change our conclusion. As noted above, the claimed invention merely uses
generic computing components to perform the recited abstract idea. We find
unavailing Appellants' contention that claim 24 is directed to significantly
more than the abstract idea because the limitations including comparing
effectiveness of different medications with respect to treating patients having
a common outcome to identify the medication for future treatment have
ostensibly not been shown to be well-understood, routine, or conventional,
including. Reply Br. 43.
73
Appeal2018-004961
Application 13/606,880
These limitations, however, are not additional elements beyond the
abstract idea, but rather are directed to the abstract idea as noted previously.
See Guidance, 84 Fed. Reg. at 56 (instructing that additional recited
element( s) should be evaluated in Alice/Mayo step two to determine whether
they ( 1) add specific limitation( s) that are not well-understood, routine, and
conventional in the field, or (2) simply append well-understood, routine, and
conventional activities previously known to the industry ( citing MPEP
§ 2106.0S(d)).
Rather, the hardware processing circuitry is the additional recited
element whose generic computing functionality is well-understood, routine,
and conventional. Accord Ans. 3 (finding that the claims' additional recited
computer elements provide conventional computer functionality that does
not add meaningful limits to practicing the abstract idea). Appellants'
arguments (Reply Br. 43) are inapposite to the Examiner's findings in this
regard and are, therefore, unpersuasive.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 24, and claim 25 not argued separately with particularity.
Claims 28 and 29: Alice/Mayo Step One
Independent claim 2 8 recites a medical data processing method that
uses hardware processing circuitry to access patient treatment data regarding
medical treatment provided by plural medical providers to plural patients
having a common medical condition, where the accessing comprises
accessing cost information regarding the medical treatment. In addition, the
patient treatment data are used to demonstrate the treatment's efficacy,
where cost information is used to support the efficacy.
74
Appeal2018-004961
Application 13/606,880
Notably, unlike other method claims, the method of claim 28 uses
hardware processing circuitry only to access patient treatment data, but not
to use that data to demonstrate efficacy. In fact, the claim does not specify
what exactly uses this data to achieve this end.
As the Specification's paragraph 126 explains, information regarding
outcomes, medications, and disease progression or regression may be (1)
stored in management system 101, and (2) processed to provide, among
other things, guidance in treating patients who have outcomes similar to
previously-treated patients. To this end, patient sub-groups can be defined
having common outcomes so that treatment data for patients in a particular
sub-group may be beneficial in determining future treatment for a new
patient with the disease. Spec. ,r,r 127-128, 130. For example, a medication
that produced the best results or was most effective in treating other patients
in the identified sub-group would be identified as a potential treatment for a
new patient with a similar condition. See Spec. ,r 130.
In addition, the disclosed invention can associate cost information of
patient treatment with patient treatment data that may be useful for
monitoring treatment cost over the patient's history from both cost and
efficacy perspectives. Spec. ,r,r 133-134. Reports can be generated
regarding patient treatment and associated costs to justify or validate the
efficacy of medical care. Spec. ,r 134.
Turning to claim 28, we note that despite the recited limitations falling
into the method category of Section 101, the Examiner nonetheless finds that
the claim is directed to the abstract idea of analyzing cost information. See
Ans. 3, 5---6.
75
Appeal2018-004961
Application 13/606,880
First, not only can the recited functions be performed mentally apart
from the recited hardware processing circuitry, these functions also organize
human activity by demonstrating treatment efficacy.
That is, a physician could access and use patient treatment data and
cost information by merely thinking about various patients' conditions,
treatments, and associated costs, or recalling such information from the
physician's memory based on the physician's training and experience.
Using this information, the physician could then demonstrate and support the
treatment's efficacy. Notably, this latter step could be done by the physician
merely remembering similar treatments performed on other patients-
including treatments performed by colleagues and other physicians.
Notably, the hardware processing circuitry is the only recited element
beyond the abstract idea, but this additional element does not integrate the
abstract idea into a practical application when reading claim 28 as a whole.
First, we are not persuaded that the claimed invention improves the
computing devices' functionality or efficiency, or otherwise changes the
way those devices function. Although the claimed invention requires
computer components, it is the incorporation of those components-not a
claimed rule-that purportedly improves the existing process. Cf
FairWarning, 839 F.3d at 1095. In short, the claimed invention does not
focus on improving computers as tools, but rather certain independently
abstract ideas that use computers as tools. See Elec. Power, 830 F.3d at
1354; see also Univ. of Fla. Res. Found., Inc. v. Gen. Elec. Co., No. 2018-
1284, slip op. at 5-11 (Fed. Cir. Feb. 26, 2019) (holding ineligible claim
reciting method of integrating physiologic treatment data that (1) converted
physiologic data received from at least two bedside machines into machine-
76
Appeal2018-004961
Application 13/606,880
independent data; (2) performed at least one programmatic action involving
that data; and (3) presented results from that action upon a bedside GUI as
directed to the abstract idea of collecting, analyzing, manipulating, and
displaying data); Meyer, 688 F.2d at 795-96 (holding ineligible claims that
merely partly replaced a neurologist's thinking process with a computer).
Not only is the patient treatment data and cost information accessed
via generic computing components to achieve that end, but the accessing
limitation is a data gathering function that constitutes insignificant extra-
solution activity that is insufficient to integrate the abstract idea into a
practical application. See Bilski, 545 F.3d at 943 ( characterizing data
gathering steps as insignificant extra-solution activity); see also Guidance,
84 Fed. Reg. at 55 (citing MPEP § 2106.05(g)).
Therefore, we do not find that the claim recites additional elements
improving (1) the computer itself, or (2) another technology or technical
field. See Guidance, 84 Fed. Reg. at 55 (citing MPEP § 2106.05(a)).
Rather, the above-noted additional element merely (1) applies the abstract
idea on a computer; (2) includes instructions to implement the abstract idea
on a computer; or (3) uses the computer as a tool to perform the abstract
idea. See Guidance, 84 Fed. Reg. at 55 (citing MPEP § 2106.05([)).
In this regard, Appellants' claimed invention is analogous to that
which the court held ineligible in Smartgene. There, the court held
ineligible a claim reciting a method for guiding selection of a therapeutic
treatment regimen for a patient with a known disease or medical condition,
where the method provided patient information to a computing device
comprising (1) a first knowledge base with different therapeutic treatment
regimens for the disease or medical condition; (2) a second knowledge base
77
Appeal2018-004961
Application 13/606,880
with expert rules for evaluating and selecting a therapeutic treatment
regimen for the disease or medical condition; and (3) a third knowledge base
with advisory information useful for treating a patient with different
constituents of said different therapeutic treatment regimens. See
Smartgene, 555 F. App'x at 951-52. A ranked listing of available
therapeutic treatment regimens for the patient was also generated, as well as
advisory information for a treatment regimen in the ranked listing based on
the patient information and expert rules. Id. at 952.
In holding this claim ineligible, the court noted that the claim did no
more than call on a "computing device," with basic functionality for
comparing stored and input data and rules, to do what doctors do routinely.
Id. at 954. The court added that the claim did not purport to identify new
computer hardware, but rather assumed the availability of physical
components for input, memory, look-up, comparison, and output. Id. at 955.
In reaching its conclusion, the court emphasized that the claim merely called
on a computer to do nothing that is even arguably an advance in physical
implementations of routine mental information-comparison and rule-
application processes. Id.
That is the case here. To the extent that Appellants contend otherwise
(see Reply Br. 54), we disagree. Nor is this a case where the claim applies a
specific compound at specific doses to treat a particular medical condition
for specific patients, as was the case in Vanda Pharmaceuticals. Unlike
Vanda's claimed invention, the claim here does not recite a treatment
method that practically applies natural relationships. See Vanda Memo.
Although Appellants' claimed invention demonstrates and supports
78
Appeal2018-004961
Application 13/606,880
treatment efficacy, it does not actually treat the patient, let alone in a manner
analogous to the eligible treatment in Vanda.
In conclusion, although the recited functions may be beneficial by
demonstrating and supporting treatment efficacy from a cost perspective, a
claim for a useful or beneficial abstract idea is still an abstract idea. See
Ariosa, 788 F.3d at 1379--80. Cf In re Salwan, 681 F. App'x 938, 938--40
(Fed. Cir. 2017) (non-precedential) (holding ineligible a claim reciting
transferring patient health information via a network, where the system used
billing software to calculate a patient's bill based on medical records and
insurance information, as directed to the abstract idea of billing insurance
companies and organizing patient health information).
We, therefore, agree with the Examiner that claim 28 is directed to an
abstract idea.
Claims 28 and 29: Alice/Mayo Step Two
Turning to Alice/Mayo step two, the recited elements----considered
individually and as an ordered combination----do not transform the nature of
claim 28 into a patent-eligible application of the abstract idea to ensure that
the claim amounts to significantly more than that idea. See Alice, 573 U.S.
at 221.
That the recited method uses hardware processing circuitry does not
change our conclusion. As noted above, the claimed invention merely uses
generic computing components to perform the recited abstract idea. We find
unavailing Appellants' contention that claim 28 is directed to significantly
more than the abstract idea because the limitations reciting using data
regarding treatment provided to plural patients to demonstrate efficacy of the
79
Appeal2018-004961
Application 13/606,880
treatment have ostensibly not been shown to be well-understood, routine, or
conventional. Reply Br. 54.
These limitations, however, are not additional elements beyond the
abstract idea, but rather are directed to the abstract idea as noted previously.
See Guidance, 84 Fed. Reg. at 56 (instructing that additional recited
element( s) should be evaluated in Alice/Mayo step two to determine whether
they ( 1) add specific limitation( s) that are not well-understood, routine, and
conventional in the field, or (2) simply append well-understood, routine, and
conventional activities previously known to the industry ( citing MPEP
§ 2106.05(d)).
Rather, the hardware processing circuitry is the additional recited
element whose generic computing functionality is well-understood, routine,
and conventional. Accord Ans. 6 (finding the hardware processing circuitry
does not add significantly more to the abstract idea); Ans. 3 (finding that the
claims' additional recited computer elements provide conventional computer
functionality that does not add meaningful limits to practicing the abstract
idea). Appellants' arguments (Reply Br. 43) are inapposite to the
Examiner's findings in this regard and are, therefore, unpersuasive.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 28, and claim 29 not argued separately with particularity.
THE ANTICIPATION REJECTION OVER MIGLIETTA
The Examiner finds that Miglietta discloses every recited element of
independent claim 20 including using hardware processing circuitry to (1)
access patient treatment data regarding past medical treatment provided to
plural patients other than a subject patient who have a common medical
80
Appeal2018-004961
Application 13/606,880
condition, and (2) process the data to identify at least one of plural different
medications for use in future treatment of the subject patient's common
medical condition. Final Act. 13-14; Ans. 10-12.
Appellants argue that Miglietta's treatment options in Figure 1 and
associated discussion lacks data regarding actual patients, let using hardware
processing circuitry to access and process patient treatment data to identify
at least one of plural medications for use in future treatment of the patient's
medical condition that is common with that of other patients. App. Br. 12-
15; Reply Br. 2. Appellants argue other recited limitations summarized
below.
ISSUES
Under§ 102, has the Examiner erred by finding that Miglietta
discloses:
(1) using hardware processing circuitry to access and process patient
treatment data to identify at least one of plural medications for use in future
treatment of a patient's medical condition that is common with that of other
patients as recited in claim 20?
(2) processing to identify new procedures for treating the common
medical condition as recited in claim 21?
(3) applying a data processing algorithm to the patient treatment data
as recited in claim 23?
( 4) processing circuitry configured to (a) access a request for the
patient treatment data for an individual patient from one of plural medical
providers providing medical care to the patient during an encounter with the
81
Appeal2018-004961
Application 13/606,880
provider, and (b) output the patient treatment data to the provider as a result
of accessing the request as recited in claim 3?
( 5) processing circuitry configured to process the patient treatment
data that includes outcome measures indicative of treatment of the patients
to provide outcome-based medical treatment informationas recited in claim
12?
( 6) processing circuitry configured to identify the one of different
treatments comprising at least one of plural medicines for use in the future
medical treatment of the patient's medical condition as recited in claim 35?
(7) processing circuitry configured to use the (a) outcomes of the
subject patient to identify a sub-group of patients who received the past
medical treatment, and (b) patient treatment data of the identified sub-group
to identify the one of different treatments as recited in claim 37?
(8) hardware processing circuitry configured to (a) use information
regarding the subject patient to identify a sub-group of patients other than
the subject patient, and (b) process the patient treatment data of only the sub-
group to identify the one treatment for use in future medical treatment of the
subject patient's medical condition as recited in claim 55?
(9) identifying an appropriate treatment for the patient by using
hardware processing circuitry and information regarding plural outcomes for
a patient as recited in claim 31?
ANALYSIS
Claims 20 and 22
We begin by noting, as does the Examiner (Ans. 8), that the
Examiner's anticipation rejection of independent claim 1 over Miglietta is
82
Appeal2018-004961
Application 13/606,880
undisputed. Although independent claim 1 differs from independent claim
20 that is at issue here, the two claims nonetheless share various key aspects,
including using hardware processing circuitry to ( 1) process patient
treatment data, and (2) identify one of plural different treatments for use in a
future medical treatment of a patient's medical condition as a result of the
processing, where the patient treatment data comprises data regarding
patients other than the subject patient.
Nor do Appellants dispute the Examiner's anticipation rejection of
claim 34 that depends from claim 1. Accord Ans. 8 (noting this point).
Claim 34 adds that the patient treatment data comprises data regarding the
past medical treatment of the plural patients' medical condition which is the
same as that of the subject patient.
Our emphasis on the term "treatments" in claim 1 underscores that
claim 20 narrows these identified treatments to medications, and adds that
the other patients' medical condition is common to that of the subject
patient.
In the rejection, the Examiner relies principally on the functionality
associated with Miglietta's database and associated treatment options in
Miglietta's Figure 1 for anticipating these limitations. See Final Act. 13-14
(referring to the findings for claim 1, and finding that Miglietta's "best
practices" database contains treatments for patients other than a new patient
who has yet to be treated); Ans. 10-12. Notably, in both the rejection and
the Answer, the Examiner refers to the undisputed findings made in
connection with claim 1 as also applicable to claim 20. See Final Act. 13;
Ans. 10.
83
Appeal2018-004961
Application 13/606,880
Turning to Miglietta, Miglietta's system populates patient records by
using an evidence-based relational database that compares medical
practitioners' diagnoses to predetermined responses to produce accurate
patient chart notes for clinical and administrative record-keeping and billing.
Miglietta Abstract. The system employs a common repository for storing,
among other things, patient demographics, medical history, treatment
history, and billing history, to allow a practitioner or staff to generate
medical information based on a diagnostic determination. Id. ,r 32. To this
end, "best practice" treatment7 plans are placed continually in Miglietta's
database from practice guides and experts in the field. Id. Based on these
evidence-based "best practices," treatment regimens are presented that are
predicated statistically upon the strength of this evidence. Id.
One such suggested "best practice" treatment schema according to a
diagnosis is shown in Miglietta's Figure 1. See Miglietta ,r,r 43, 100. As
shown in this figure, the system suggests five options, namely ( 1) Surgery;
(2) Medication; (3) further examination ("Exam"); ( 4) further study
("Study"); and (5) an additional procedure ("Procedure"). Miglietta ,r,r 100-
101; Fig. 1. Based on "best case" treatments that are ranked according to
evidence-based outcomes, the physician can choose the indicated treatment
that aligns most closely with the diagnosis. Miglietta ,r 100.
Based on this functionality, we agree with the Examiner that some
sort of hardware processing circuitry is used in connection with accessing
7 Although Miglietta sometimes capitalizes the first letter of the word
"treatment" as in paragraphs 33 and 100, we nonetheless refer to "treatment"
by its lower-case version for clarity and consistency. We treat similar
capitalized terms in Miglietta similarly.
84
Appeal2018-004961
Application 13/606,880
and processing data in connection with Miglietta's relational database to
recommend options, such as those in Figure 1, for a particular diagnosis.
That Appellants do not dispute the Examiner's findings regarding the
hardware processing circuitry in claim 1 that the Examiner likewise relies on
in rejecting claim 20 (see Final Act. 13; Ans. 10) is telling in this regard, as
is the fact that Miglietta is replete with references to computer-based
functionality. See, e.g., Miglietta claims 28 and 35 (reciting that the system
is computerized and automated in the claims' preambles); ,r 50 ( defining the
term "database" as an indexed relational data repository, partitioned for each
practice area, and distributed amongst various servers). Indeed, it is difficult
to envision Miglietta's system realizing this computerized and automated
functionality without hardware processing circuitry.
Nevertheless, we acknowledge that Miglietta's paragraph 100
indicates that a physician can choose the indicated treatment in Figure 1 that
aligns most closely with the diagnosis based on "best case" treatments that
are ranked according to evidence-based outcomes. But hardware processing
circuitry is nonetheless at least used in connection with this choice, at least
with respect to ranking the "best case" treatments-including medication-
based treatment-according to evidence-based outcomes. See Miglietta
,r,r 68 ( defining "treatment" as including medication), 100-101; Fig. 1.
Appellants' arguments regarding Miglietta allegedly not using
hardware processing circuitry to perform the recited processing to achieve
the desired result, namely the recited identification (App. Br. 13-15), are
unavailing for the reasons noted previously and those indicated by the
Examiner.
85
Appeal2018-004961
Application 13/606,880
To be sure, Miglietta does not state explicitly that the system identifies
a particular medication of plural medications, despite recommending
"Medication" as one of the five treatment options in Figure 1. Miglietta
notes, however, that these treatment groups in Figure 1, including
"Medication," share a common characteristic to allow for defining default
behavior common to the class, such as the requisite data for dose, refills,
quantity, etc. for prescription medications. Miglietta ,r 101. Notably, each
treatment-including "Medication"-generates a generic database of related
tasks that populates the records to accomplish that treatment. Id.
Our emphasis on "prescription" underscores that Miglietta's system
identifies at least one medication-a prescription medication----of plural
different medications, namely prescription and non-prescription (e.g., over-
the-counter) medications. Although Miglietta does not state explicitly that at
least one of plural different medications is so identified, Miglietta
nonetheless at least implicitly discloses this identification. Appellants'
arguments to the contrary (App. Br. 14--15) are unavailing and not
commensurate with the scope of the claim.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 20, and claim 22 not argued separately with particularity.
Claim 21
We also sustain the Examiner's rejection of claim 21 reciting, in
pertinent part, processing to identify new procedures for treating the
common medical condition. See Final Act. 14; Ans. 29. Despite
Appellants' arguments to the contrary (App. Br. 28-29; Reply Br. 16), we
see no error in the Examiner's reliance on Miglietta's paragraphs 33 and 100
86
Appeal2018-004961
Application 13/606,880
for teaching using hardware processing circuitry to process data to identify
the recited new procedures, particularly given the continual updates to the
database, and the fact that the identified treatment procedure is new to the
physician who is given that recommendation as the Examiner indicates.
Ans. 29. Appellants' arguments regarding Miglietta allegedly not using
hardware processing circuitry to perform the recited processing to achieve
the desired result, namely the recited identification (App. Br. 28-29), are
unavailing for the reasons noted previously and those indicated by the
Examiner.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 21.
Claim 23
We also sustain the Examiner's rejection of claim 23 reciting, in
pertinent part, applying a data processing algorithm to the patient treatment
data. As the Federal Circuit has emphasized, the term "algorithm" has a
broad meaning, for it encompasses a series of instructions for a computer to
follow. Typhoon Touch v. Dell, Inc., 659 F.3d 1376, 1384 (Fed. Cir. 2011).
The court added that the term "algorithm" is a term of art in a broad sense,
namely to identify a step-by-step procedure for accomplishing a given result.
Id. (citinginreFreeman, 573 F.2d 1237, 1245 (CCPA 1978)).
Given this broad interpretation, we see no error in the Examiner's
reliance on Miglietta's patient treatment data processing and analysis
functionality for teaching applying a data processing algorithm, for this
processing and analysis would at least involve applying a step-by-step
procedure to accomplish a given result, namely (1) analyzing the data to,
87
Appeal2018-004961
Application 13/606,880
among other things, determine diagnosis/treatment relationships, and (2)
providing the results to a medical provider as the Examiner indicates. See
Final Act. 14--15; Ans. 30 (citing Miglietta ,r,r 33, 83-84 in connection with
the rejection of claim 1 ). Appellants' arguments to the contrary (App.
Br. 29; Reply Br. 16) are unavailing and not commensurate with the scope of
the claim.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 23.
Claims 1-6, 14, 15, 34, 36, 53, 54, and 56-58
We also sustain the Examiner's rejection of claim 3 reciting that the
processing circuitry is configured to ( 1) access a request for the patient
treatment data for an individual patient from one of plural medical providers
providing medical care to the patient during an encounter with the provider,
and (2) output the patient treatment data to the provider as a result of
accessing the request.
First, claim 3 depends from independent claim 1-a claim whose
anticipation rejection is undisputed as noted previously. Rather, the dispute
here centers on whether Miglietta discloses the limitations that claim 3 adds
to claim 1. On this record, we see no error in the Examiner's findings in this
regard.
Notably, Appellants do not squarely address-let alone persuasively
rebut-the Examiner's finding that updating a patient chart in Miglietta's
paragraphs 107 and 108 necessarily requires a medical provider requesting
at least some previous patient data to view that data, particularly to
determine any changes in patient status. Ans. 19. To the extent that
88
Appeal2018-004961
Application 13/606,880
Appellants contend that this process does not involve requesting patient
treatment data (see App. Br. 21-22), there is no persuasive evidence on this
record to substantiate such a contention. Nor do we see error in the
Examiner's finding that Miglietta's system outputs this data to the medical
provider as a result of accessing the request given the provider's ability to
view the data in connection with this update process. See Final Act. 12;
Ans. 19.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 3, and claims 1, 2, 4---6, 14, 15, 34, 36, 53, 54, and 56-58 not argued
separately with particularity.
Claim 12
We also sustain the Examiner's rejection of claim 12 reciting, in
pertinent part, that the processing circuitry is configured to process the
patient treatment data that includes outcome measures indicative of
treatment of the patients to provide outcome-based medical treatment
information. Final Act. 12; Ans. 24--25.
First, claim 12 depends from independent claim 1-a claim whose
anticipation rejection is undisputed as noted previously. Rather, the dispute
here centers on whether Miglietta discloses the limitations that claim 12 adds
to claim 1 that involve outcome measures as noted above.
As the Examiner indicates, the term "outcome measures" is not
defined in the Specification. Ans. 24. Paragraph 48 of Appellants'
Specification, however, explains that an exemplary outcome measure is
"DAS28" that uses data from plural parameters including conditions of
tenderness (pain) and swelling of joints, laboratory information, and a
89
Appeal2018-004961
Application 13/606,880
physician's evaluation of the patient's general health in terms of an amount
of disease activity present in the patient resulting from examination and
observation of the patient. Notably, this passage indicates that this particular
outcome measure is exemplary, and other outcome measures may be used in
other embodiments. Spec. ,r 48.
As shown in Appellants' Figure 3, the GUI 30 includes a window 66
that provides a graphical indication of scores regarding the patient. Spec.
,r 56. In Appellants' Figure 3, the window 66 includes three indicators that
may be selected according to the patient's current DAS28 score that is
calculated by the formula in paragraph 51. The patient's DAS28 scores can
also be graphed at different moments in time in the "DAS28 Trend" window
60 in Appellants' Figure 3. Spec. ,r 58.
Although this description of these exemplary outcome measures
informs our understanding of the recited outcome measures, the term is not
so limited. To the extent that Appellant contends that the recited outcome
measure must be limited to this particular description (see App. Br. 26), we
decline to import that description into the claim. See Phillips v. AWH Corp.,
415 F.3d 1303, 1323 (Fed. Cir. 2005) (en bane) ("[A]lthough the
specification often describes very specific embodiments of the invention, we
have repeatedly warned against confining the claims to those embodiments ..
. . [C]laims may embrace different subject matter than is illustrated in the
specific embodiments in the specification.") ( citations and internal quotation
marks omitted).
Rather, an "outcome measure" encompasses any measure, metric,
quantity, or assessment pertaining to an outcome related to a patient's
treatment. Accord Ans. 25 (interpreting "outcome measure" as any data or
90
Appeal2018-004961
Application 13/606,880
measure of the treatment of patients that is used to provide outcome-based
medical treatment). 8
Given this interpretation, we see no error in the Examiner's findings
in this regard. Notably, Appellants do not squarely address-let alone
persuasively rebut-the Examiner's reliance on Miglietta's (1) outcome
studies in paragraph 29, (2) updating statistically-built diagnosis/treatment
relationships and correlations in paragraph 33, and (3) ranked list of
evidence-based outcomes in paragraph 100 for teaching the recited outcome-
based limitations. Ans. 24--25. To the extent that Appellants contend
otherwise (see App. Br. 26), there is no persuasive evidence on this record to
substantiate such a contention.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 12.
Claim 35
We also sustain the Examiner's rejection of claim 35 reciting that the
processing circuitry is configured to identify the one of different treatments
comprising at least one of plural medicines for use in the future medical
treatment of the patient's medical condition.
8 Notably, the Examiner interprets the term "outcome measure" as any
measure of the treatment of patients that is used to provide outcome-based
medical treatment in connection with claim 12, but broadens this
interpretation as any data indicating of the treatment of patients that is used
to provide outcome-based medical treatment in connection with claim 13.
See Ans. 25. Despite this distinction, we nonetheless find both
interpretations reasonable and, therefore, consolidate them for clarity and
brevity.
91
Appeal2018-004961
Application 13/606,880
First, claim 35 depends from independent claim 1-a claim whose
anticipation rejection is undisputed as noted previously. Rather, the dispute
here centers on whether Miglietta discloses the limitations that claim 35 adds
to claim 1. On this record, we see no error in the Examiner's findings in this
regard.
As we noted previously in connection with claim 20, Miglietta does
not state explicitly that the system identifies a particular medication of plural
medications, despite recommending "Medication" as one of the five
treatment options in Figure 1. Miglietta notes, however, that these treatment
groups in Figure 1, including "Medication," share a common characteristic
to allow for defining default behavior common to the class, such as the
requisite data for dose, refills, quantity, etc. for prescription medications.
Miglietta ,r 101. Notably, each treatment-including "Medication"-
generates a generic database of related tasks that populates the records to
accomplish that treatment. Id.
Our emphasis on "prescription" underscores that Miglietta's system
identifies at least one medication-a prescription medication----of plural
different medications, namely prescription and non-prescription (e.g., over-
the-counter) medications. Although Miglietta does not state explicitly that at
least one of plural different medications is so identified, Miglietta
nonetheless at least implicitly discloses this identification-an identification
that includes prescription medicines. Appellants' arguments to the contrary
(App. Br. 27-28; Reply Br. 16) are unavailing and not commensurate with
the scope of the claim.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 35.
92
Appeal2018-004961
Application 13/606,880
Claim 37
We also sustain the Examiner's rejection of claim 37 reciting that the
processing circuitry is configured to use the (1) outcomes of the subject
patient to identify a sub-group of patients who received the past medical
treatment, and (2) patient treatment data of the identified sub-group to
identify the one of different treatments. See Final Act. 16; Ans. 28-29.
First, claim 37 depends from claim 36 that depends from independent
claim I-the latter two claims whose anticipation rejection is undisputed as
noted previously. Rather, the dispute here centers on whether Miglietta
discloses the limitations that claim 37 adds to claims 1 and 36. On this
record, we see no error in the Examiner's findings in this regard.
Despite Appellants' arguments to the contrary (App. Br. 28; Reply Br.
16), Appellants do not squarely address-let alone persuasively rebut-the
Examiner's finding that Miglietta discloses the recited sub-group, namely
patients who match, or are correlated with, data entered by a physician
during an encounter and provide the basis for "best practices" treatment
suggestions. Ans. 28-29 (citing Miglietta ,r,r 91, 108, 29, 33, 35; Fig. 5).
We see no error in this unrebutted finding, particularly given the fact that
these patients have similar symptoms, diagnoses, and demographics as the
Examiner indicates. Ans. 29. That Miglietta's case findings allow
structuring data for use in outcome or demographic studies in which
occurrences of certain diseases are related to, among other things, patient
gender and age in paragraph 91 as the Examiner indicates (Ans. 28) only
bolsters the Examiner's findings in this regard.
93
Appeal2018-004961
Application 13/606,880
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 37.
Claim 55
We also sustain the Examiner's rejection of claim 55 reciting that the
hardware processing circuitry is configured to ( 1) use information regarding
the subject patient to identify a sub-group of patients other than the subject
patient, and (2) process the patient treatment data of only the sub-group to
identify the one treatment for use in future medical treatment of the subject
patient's medical condition. See Final Act. 17; Ans. 32-33.
First, claim 55 depends from independent claim 1-a claim whose
anticipation rejection is undisputed as noted previously. Rather, the dispute
here centers on whether Miglietta discloses the limitations that claim 55 adds
to claim 1. On this record, we see no error in the Examiner's findings in this
regard-findings that are based principally on those made in connection
with claims 1 and 37. See Ans. 32.
As noted previously regarding claim 3 7, Appellants do not squarely
address-let alone persuasively rebut-the Examiner's finding that Miglietta
discloses the recited sub-group, namely patients who match, or are
correlated with, data entered by a physician during an encounter and provide
the basis for "best practices" treatment suggestions. Ans. 28-29 ( citing
Miglietta ,r,r 91, 108, 29, 33, 35; Fig. 5). We see no error in this unrebutted
finding, particularly given the fact that these patients have similar
symptoms, diagnoses, and demographics as the Examiner indicates. Ans.
29. That Miglietta's case findings allow structuring data for use in outcome
or demographic studies in which occurrences of certain diseases are related
94
Appeal2018-004961
Application 13/606,880
to, among other things, patient gender and age in paragraph 91 as the
Examiner indicates (Ans. 28) only bolsters the Examiner's findings in this
regard.
Nor are we persuaded by Appellants' contention that Miglietta lacks
the recited hardware processing circuitry and its functionality (Reply Br. 23-
25) for the reasons noted previously.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 55.
Claims 31, 32, and 38-40
We also sustain the Examiner's rejection of independent claim 3 1
reciting, in pertinent part, identifying an appropriate treatment for a patient
by using hardware processing circuitry and information regarding plural
outcomes for the patient, where the treatment is identified using information
regarding a previous use of the treatment upon other patients with the
medical condition.
As the Specification's paragraph 126 explains, a management system
can store information regarding the outcomes, medications, and disease
progression or regression, and this information can be processed to, among
other things, provide guidance in treating patients who have outcomes
similar to previously-treated patients. Paragraph 128 adds that treatment
data of previous patients whose outcomes correspond to those of a new
patient can be used to select the new patient's appropriate treatment.
As shown in Appellants' Figure 3A, the interface 30a enables
inputting information regarding a list of outcomes of a patient being treated
for rheumatoid arthritis by checking the associated boxes. Spec. ,r 66. The
95
Appeal2018-004961
Application 13/606,880
inputted outcomes may be used to indicate ( 1) whether a disease is present,
(2) the disease activity level, and (3) the patient's state. Id. The generated
outcomes may also be used to determine appropriate patient treatment. Id.
Despite Appellants' arguments to the contrary (App. Br. 16-17; Reply
Br. 3-5), we see no error in the Examiner's reliance on the functionality
associated with Miglietta's paragraph 100 for the reasons noted previously
and those indicated by the Examiner. See Final Act. 15; Ans. 14 (citing
Miglietta ,r 100 and also referring to the findings made in connection with
claim 1). Nor are we persuaded by Appellants' contention that Miglietta
lacks the recited hardware processing circuitry to identify an appropriate
treatment for the patient (App. Br. 16-17; Reply Br. 4--5) for the reasons
noted previously.
Although Appellants argue for the first time on pages 3 and 4 of the
Reply Brief that Miglietta does not also disclose accessing information
regarding plural outcomes for the patient corresponding to the medical
condition as claimed, such arguments were not raised in the Appeal Brief
and are, therefore, waived as untimely. See 37 C.F.R. § 41.41(b)(2). Nor
has good cause been shown to raise these new arguments in the first instance
in the Reply Brief, particularly given the striking similarity between the
Examiner's response to arguments in the Answer for claim 31 and the
rejection. Compare Final Act. 15 with Ans. 14.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 31, and claims 32 and 38--40 not argued separately with particularity.
THE OBVIOUSNESS REJECTION OVER MIGLIETTA AND KREMER
96
Appeal2018-004961
Application 13/606,880
Claims 7, 11, and 33
We also sustain the Examiner's rejection of claim 11 reciting that the
processing circuitry is configured to control the communications interface to
communicate the patient treatment data to medical supply entities in
exchange for compensation for the medical providers.
First, claim 11 depends from independent claim 1-a claim whose
anticipation rejection based on Miglietta is undisputed as noted previously.
Nor do Appellants dispute the Examiner's obviousness rejection of
dependent claim 7 on pages 23 and 24 of the Final Office Action-the
associated findings on which the Examiner relies in rejecting claim 11. See
Final Act. 25 (incorporating Kremer's teachings in connection with the
rejection of claim 7). Accord Ans. 8, 24 (noting that the obviousness
rejection of claim 7 is undisputed).
Despite Appellants' arguments to the contrary (App. Br. 25; Reply Br.
14 ), we see no error in the Examiner's reliance on Kremer for at least
suggesting controlling the recited communications interface to communicate
patient treatment data to medical supply entities for compensation. See Ans.
23 (citing Kremer ,r,r 11-14). Not only are physicians paid for completing
forms containing clinical data in Kremer' s paragraph 11, but Kremer also
teaches leasing access to stored data regarding a patient's rheumatic disease
treatment to various industry participants, including pharmaceutical
companies, by providing those companies with reports and analytical
documents based on that data in paragraph 13. These business arrangements
at least suggest communicating patient treatment data to medical supply
entities-including pharmaceutical companies-in exchange for
compensation for the medical providers.
97
Appeal2018-004961
Application 13/606,880
Nor are we persuaded of error in the Examiner's articulated reason to
combine Miglietta and Kremer, namely to improve patient care and help
researchers better understand disease and outcomes-the very reason that
was articulated in connection with the undisputed obviousness rejection of
claim 7 as the Examiner indicates. Ans. 23-24. On this record, we find the
Examiner's proposed combination uses prior art elements predictably
according to their established functions-an obvious improvement. See KSR
Int'! Co. v. Teleflex, Inc., 550 U.S. 398,417 (2007).
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 11, and claims 7 and 33 not argued separately with particularity.
Claim 13
We also sustain the Examiner's rejection of claim 13 reciting, in
pertinent part, the processing circuitry is configured to process the patient
treatment data that includes outcome measures to provide efficacy
information regarding the patients' treatment. See Final Act. 25; Ans. 25-
26.
First, claim 13 depends from independent claim 1-a claim whose
anticipation rejection based on Miglietta is undisputed as noted previously,
and whose findings are relied on in rejecting claim 13. See Final Act. 25
(referring to the discussion regarding claim 1 ). Nor do Appellants dispute
the Examiner's obviousness rejection of dependent claim 7 on pages 23 and
24 of the Final Office Action-the associated findings on which the
Examiner also relies in rejecting claim 13. See Final Act. 25 (incorporating
Kremer's teachings in connection with the rejection of claim 7). Accord
Ans. 8, 24 (noting that the obviousness rejection of claim 7 is undisputed).
98
Appeal2018-004961
Application 13/606,880
As the Examiner indicates, the term "outcome measures" is not
defined in the Specification. Ans. 25. Paragraph 48 of Appellants'
Specification, however, explains that an exemplary outcome measure is
"DAS28" that uses data from plural parameters including conditions of
tenderness (pain) and swelling of joints, laboratory information, and a
physician's evaluation of the patient's general health in terms of an amount
of disease activity present in the patient resulting from examination and
observation of the patient. Notably, this passage indicates that this particular
outcome measure is exemplary, and other outcome measures may be used in
other embodiments. Spec. ,r 48.
As shown in Appellants' Figure 3, the GUI 30 includes a window 66
that provides a graphical indication of scores regarding the patient. Spec. ,r
56. In Appellants' Figure 3, the window 66 includes three indicators that
may be selected according to the patient's current DAS28 score that is
calculated by the formula in paragraph 51. The patient's DAS28 scores can
also be graphed at different moments in time in the "DAS28 Trend" window
60 in Appellants' Figure 3. Spec. ,r 58.
Although this description of these exemplary outcome measures
informs our understanding of the recited outcome measures, the term is not
so limited. To the extent that Appellant contends that the recited outcome
measures must be limited to this particular description (see App. Br. 26), we
decline to import that description into the claim. See Phillips, 415 F.3d at
1323.
Rather, an "outcome measure" encompasses any measure, metric,
quantity, or assessment pertaining to an outcome related to a patient's
treatment. Accord Ans. 25 (interpreting "outcome measure" as any data or
99
Appeal2018-004961
Application 13/606,880
measure indicating treatment of patients that is used to provide outcome-
based medical treatment).
Given this interpretation, we see no error in the Examiner's reliance
on Miglietta's diagnosis/treatment relationships for at least suggesting the
recited outcome measures (Ans. 25), particularly in light ofMiglietta's (1)
outcome studies in paragraph 29, (2) updating statistically-built
diagnosis/treatment relationships and correlations in paragraph 33, and (3)
ranked list of evidence-based outcomes in paragraph 100 as noted
previously. To the extent that Appellants contend otherwise (see App. Br.
26-27; Reply Br. 14), there is no persuasive evidence on this record to
substantiate such a contention.
Nor do we see error in the Examiner's additional reliance on
Miglietta's paragraph 105 and Kremer's paragraph 14 for at least suggesting
that outcome measures can provide efficacy information regarding patient
treatment despite the claim's recitation that the processing circuitry is
configured to process patient treatment data to provide efficacy
information-a mere intended use of this processing capability as the
Examiner indicates. See Ans. 25-26.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 13.
Claims 16 and 17
We also sustain the Examiner's rejection of claim 16 reciting, in
pertinent part, processing circuitry at one of plural medical providers
configured to display a graphical representation of human anatomy and at
100
Appeal2018-004961
Application 13/606,880
least some of the patient treatment data is inputted by interaction of medical
personnel with the graphical representation.
Despite Appellants' arguments to the contrary (App. Br. 27; Reply
Br. 14--16), we see no error in the Examiner's reliance on Miglietta and
Kremer for at least suggesting the recited graphical anatomical
representation that enables data input via interaction with that representation.
See Final Act. 25; Ans. 26-27 (citing Miglietta ,r,r 89, 103; Kremer ,r 23;
Fig. 2).
Although the Examiner acknowledges that the form in Kremer's
Figure 2 is in paper form, this form nonetheless enables physicians to enter
the number of swollen joints by merely filling in the circles representing a
particular joint in the graphical anatomical representation as shown below.
B j UW H~i~tt. Rn~:vm1~t;~~1-.,~nh:-~;. p;.~Jmm -- ~u
I ;'QRNr:~i\
i ~8.}o:r;t Co~~t
! famwJfliii><
1~~~75£~
I
!
I
I
!
I
! 'f.<'"'"~ 7,,·mn :..,;....,s fo:,~ TH,.;;;,: J\,,:i;t,s
II ··,;;:;.;,;;;;,, .. ,~~g';"'.i~~~~""
~:J}
~---------······-······--··································- .
FIG. 2
101
Appeal2018-004961
Application 13/606,880
Kremer's Figure 2 showing form with anatomical representation
As shown above, the form itself instructs physicians to fill in circles
representing swollen joints at the time of the patient's visit. Even assuming,
without deciding, that this form is limited solely to paper versions as the
Examiner appears to acknowledge (see Ans. 27), it nonetheless enables the
physician to input patient treatment data by merely filling in the circles
associated with particular joints on the anatomical representation itself.
Notably, this interaction with the graphical representation facilitates
inputting data into a database for electronic access as the Examiner
indicates. See id. ( citing Kremer ,r 3 5).
Although Kremer's electronically-stored data originates from this
apparent paper form, Appellants do not persuasively rebut the Examiner's
finding that implementing Kremer's form in Figure 2 electronicall~
including its graphical anatomical representation-would have been at least
an obvious variation to, among other things, enable data entry into the
computer's database directly via a GUI instead of converting the completed
paper form to an electronic form by, for example, scanning the paper form.
See Ans. 27; see also Aatrix Software, Inc. v. Green Shades Software, Inc.,
882 F.3d 1121 (Fed. Cir. 2018) (discussing eligibility of a claim reciting a
data processing system for designing, creating, and importing data into a
viewable form, where the system included, among other things, (1) a form
file that modeled the physical representation of an original paper form and
established the calculations and rule conditions required to fill in the
viewable form; (2) a form file creation program that imported a background
102
Appeal2018-004961
Application 13/606,880
image from an original form; and (3) a form viewer program); Content
Extraction & Transmission LLC v. Wells Fargo, 776 F.3d 1343, 1345--49
(Fed. Cir. 2014) (holding ineligible claims reciting a method of ( 1)
extracting data from hard copy documents using an automated digitizing unit
such as a scanner; (2) recognizing specific information from the extracted
data; and (3) storing that information in memory).
In short, the Examiner's proposed enhancement merely updates
Kremer' s system using modem electronic components to gain the commonly
understood benefits of such an adaptation including, among other things,
simplified operation and increased efficiency by precluding the need to scan
a paper form to enter the data into the computer's database. See Leapfrog
Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007). To
the extent that Appellants contend that such an adaptation would have been
uniquely challenging or otherwise beyond the level of ordinarily skilled
artisans (see App. Br. 27; Reply Br. 15), there is no persuasive evidence on
this record to substantiate such a contention. See Leapfrog, 485 F.3d at
1162.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 16, and claim 1 7 not argued separately with particularity.
Claim 24
We also sustain the Examiner's rejection of claim 24 reciting, in
pertinent part, that the processing comprises comparing effectiveness of
different ones of the medications with respect to treatment of the patients
having a common outcome to identify at least one of the different
medications for use in future treatment.
103
Appeal2018-004961
Application 13/606,880
As noted previously, in rejecting independent claim 20 from which
claim 24 depends, the Examiner relies principally on the functionality
associated with Miglietta's database and associated treatment options in
Miglietta's Figure 1. See Final Act. 13-14 (referring to the findings for
claim 1, and finding that Miglietta's "best practices" database contains
treatments for patients other than a new patient who has yet to be treated);
Ans. 10-12. Notably, in both the rejection and the Answer, the Examiner
refers to the undisputed findings made in connection with claim 1 as also
applicable to claim 20. See Final Act. 13; Ans. 10. Although claims 20 and
24 do not depend from claim 1 as Appellant indicates for the first time on
page 16 of the Reply Brief, we nonetheless are unpersuaded of error in the
Examiner's reference to those undisputed findings at least with respect to
their applicability to commensurate limitations in claims 20 and 24.
Furthermore, as we indicated previously in connection with claim 20,
we agree with the Examiner that some sort of hardware processing circuitry
is used in connection with accessing and processing data in connection with
Miglietta's relational database to recommend options, such as those in
Figure 1, for a particular diagnosis. That Appellants do not dispute the
Examiner's findings regarding the hardware processing circuitry in claim 1
that the Examiner likewise relies on in rejecting claim 20 (see Final Act. 13;
Ans. 10) and claim 24 (Ans. 30) is telling in this regard, as is the fact that
Miglietta is replete with references to computer-based functionality. See,
e.g., Miglietta claims 28 and 35 (reciting that the system is computerized and
automated in the claims' preambles); ,r 50 ( defining the term "database" as
an indexed relational data repository, partitioned for each practice area, and
distributed amongst various servers). Indeed, it is difficult to envision
104
Appeal2018-004961
Application 13/606,880
Miglietta's system realizing this computerized and automated functionality
without hardware processing circuitry.
Nevertheless, we acknowledge that Miglietta's paragraph 100
indicates that a physician can choose the indicated treatment in Figure 1 that
aligns most closely with the diagnosis based on "best case" treatments that
are ranked according to evidence-based outcomes. But hardware processing
circuitry is nonetheless at least used in connection with this choice, at least
with respect to ranking the "best case" treatments-including medication-
based treatment-according to evidence-based outcomes. See Miglietta
,r,r 68 ( defining "treatment" as including medication), 100-101; Fig. 1.
Appellants' arguments regarding Miglietta allegedly not using
hardware processing circuitry to perform the recited processing to achieve
the desired result, namely the recited identification (App. Br. 13-15), are
unavailing for the reasons noted previously and those indicated by the
Examiner.
To be sure, Miglietta does not state explicitly that the system identifies
a particular medication of plural medications, despite recommending
"Medication" as one of the five treatment options in Figure 1. Miglietta
notes, however, that these treatment groups in Figure 1, including
"Medication," share a common characteristic to allow for defining default
behavior common to the class, such as the requisite data for dose, refills,
quantity, etc. for prescription medications. Miglietta ,r 101. Notably, each
treatment-including "Medication"----generates a generic database of related
tasks that populates the records to accomplish that treatment. Id.
Our emphasis on "prescription" underscores that Miglietta's system
identifies at least one medication-a prescription medication----of plural
105
Appeal2018-004961
Application 13/606,880
different medications, namely prescription and non-prescription ( e.g., over-
the-counter) medications. Although Miglietta does not state explicitly that at
least one of plural different medications is so identified, Miglietta
nonetheless at least implicitly discloses this identification.
Although the Examiner acknowledges that Miglietta does not compare
the effectiveness of different medications with respect to treatment of
patients with a common outcome to identify at least one medication for use
in future treatment, we nonetheless see no error in the Examiner's reliance
on Kremer's paragraph 22 for at least suggesting such a comparison. See
Final Act. 26. In that paragraph, Kremer explains that by using standardized
editable forms at each patient follow-up visit with a physician, comparative
effectiveness can be examined to, among other things, provide more efficient
clinical trials of biologics as well as a richer amount of information on each
biologic for use by a participating physician to base treatment decisions.
Kremer ,r 22. Notably, one such follow-up form is shown in Kremer's
Figures 16A and 16B where an array of current biologics and other
medications are presented to physicians for selection. Similar medication
selections are presented to patients in the forms in Kremer's Figures 18A to
19B, as well as trials and studies involving various biologics and
medications in the form shown in Kremer's Figures 25 and 26.
Given these teachings, we see no error in the Examiner's reliance on
Kremer for at least suggesting the recited medication-effectiveness
comparison, where such a comparison uses hardware processing circuitry in
light of Miglietta for the reasons noted above and those indicated by the
Examiner. Appellants' arguments to the contrary (App. Br. 29--30; Reply
Br. 16-18) are, therefore, unavailing.
106
Appeal2018-004961
Application 13/606,880
We add that Appellants' contention on page 17 of the Reply Brief that
the prior art allegedly also teaches away from the claimed invention was not
raised in the Appeal Brief and is, therefore, waived as untimely. See 37
C.F.R. § 4I.41(b)(2). Nor has good cause been shown to raise this new
argument in the first instance in the Reply Brief. Nevertheless, even if this
argument was timely raised-which it was not-nothing on this record
indicates that the cited references criticize, discredit, or otherwise discourage
investigation into the invention claimed as required for teaching away. See
Norgreninc. v. Int'! Trade Comm'n, 699 F.3d 1317, 1326 (Fed. Cir. 2012);
see also In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006).
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 24.
Claim 25
We also sustain the Examiner's rejection of claim 25 reciting, in
pertinent part, identifying one of the medications as providing increased
regression of the disease for the patients having the common outcome
compared with another medication.
Despite Appellants' arguments to the contrary (App. Br. 30; Reply
Br. 18), we see no error in the Examiner's reliance on Kremer's paragraph
20 for at least suggesting the recited limitations for the reasons noted above
and by the Examiner. Final Act. 26; Ans. 31. Therefore, we are not
persuaded that the Examiner erred in rejecting claim 25.
107
Appeal2018-004961
Application 13/606,880
THE OBVIOUSNESS REJECTION OVER MIGLIETTA AND BANIGAN
Claims 28 and 29
We also sustain the Examiner's obviousness rejection of independent
claim 28 over Miglietta and Banigan. Final Act. 29; Ans. 12-14.
Independent claim 2 8 recites a medical data processing method that
uses hardware processing circuitry to access patient treatment data regarding
medical treatment provided by plural medical providers to plural patients
having a common medical condition, where the accessing comprises
accessing cost information regarding the medical treatment. In addition, the
patient treatment is used to demonstrate the treatment's efficiacy, where cost
information is used to support the efficacy.
Notably, unlike other method claims, the method of claim 28 uses
hardware processing circuitry only to access patient treatment data, but not
to use that data to demonstrate efficacy. In fact, the claim does not specify
what exactly uses this data to achieve this end.
As the Specification's paragraph 126 explains, information regarding
outcomes, medications, and disease progression or regression may be (1)
stored in management system 101, and (2) processed to provide, among
other things, guidance in treating patients who have outcomes similar to
previously-treated patients. To this end, patient sub-groups can be defined
having common outcomes so that treatment data for patients in a particular
sub-group may be beneficial in determining future treatment for a new
patient with the disease. Spec. ,r,r 127-128, 130. For example, a medication
that produced the best results or was most effective in treating other patients
in the identified sub-group would be identified as a potential treatment for a
new patient with a similar condition. See Spec. ,r 130.
108
Appeal2018-004961
Application 13/606,880
In addition, the disclosed invention can associate cost information of
patient treatment with patient treatment data that may be useful for
monitoring treatment cost over the patient's history from both cost and
efficacy perspectives. Spec. ,r,r 133-134. Reports can be generated
regarding patient treatment and associated costs to justify or validate the
efficacy of medical care. Spec. ,r 134.
Despite Appellants' arguments to the contrary (App. Br. 15-16; Reply
Br. 2), we see no error in the Examiner's reliance on the cited prior art for at
least suggesting the recited limitations for the reasons noted above and those
indicated by the Examiner. Final Act. 29; Ans. 12-14. First, Appellants'
arguments regarding Miglietta's alleged shortcomings in connection with
using hardware processing circuitry to access the recited patient treatment
data (App. Br. 15) are unavailing for the reasons noted previously and those
indicated by the Examiner. Second, Appellants' contentions regarding the
alleged shortcomings of Banigan's paragraphs 31 and 59 in connection with
the second and third clauses of claim 28 (App. Br. 15-16) do not squarely
address-let alone persuasively rebut-the Examiner's additional reliance
on Banigan's paragraphs 72, 74, and 78 for at least suggesting these
limitations on pages 13 and 14 of the Answer. See Reply Br. 2 (referring to
the arguments in the Appeal Brief for the rejection of claim 28).
Accordingly, the weight of the evidence on this record favors the Examiner.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 28, and claim 29 not argued separately with particularity.
109
Appeal2018-004961
Application 13/606,880
Claims 41 and 43
We also sustain the Examiner's obviousness rejection of independent
claim 41 reciting a medical data processing method that ( 1) uses hardware
processing circuitry to access information regarding a subject patient being
treated for a disease, where the information indicates a level of the patient's
disease activity, and (2) uses a user interface to display a graphical indicator
to convey information regarding the disease activity level. According to the
claim, two visible indications within the graphical indicator are displayed,
namely first and visible indications indicating that the patient's disease
activity level corresponds to first and second disease states, respectively, of
the patient at different moments in the past.
The term "graphical indicator" is not defined in Appellants'
Specification. As shown below, however, Appellants' Figure 3 illustrates a
graphical user interface (GUI) 30 including a window 66 that provides a
graphical indication of scores regarding the patient. Spec. ,r 56.
110
Appeal2018-004961
Application 13/606,880
FIG. 3
Appellants' GUI 30 in Figure 3
As shown above, the window 66 includes three indicators that may be
selected according to the patient's current DAS28 score that is calculated by
the formula in paragraph 51. To this end, the DAS28 score uses data from
plural parameters including conditions of tenderness (pain) and swelling of
joints, laboratory information, and a physician's evaluation of the patient's
general health in terms of an amount of disease activity present in the patient
resulting from examination and observation of the patient. See Spec. ,r,r 48-
51, 56. The patient's DAS28 scores can also be graphed at different
moments in time in the "DAS28 Trend" window 60 in Appellants' Figure 3.
Spec. ,r 58.
111
Appeal2018-004961
Application 13/606,880
Turning to the rejection, the Examiner finds that Banigan's graphic
display of disease progression in paragraph 5 8 teaches displaying the recited
graphical indicator, including first and second visible indications indicating
disease activity levels at first and second disease states, respectively, at
respective different moments in time in the past. Final Act. 30; Ans. 15-16.
Despite Appellants' arguments to the contrary (App. Br. 17-19; Reply
Br. 5-10), we see no error in the Examiner's findings in this regard.
Although Banigan does not show the graphic display of disease progression
or specify its particulars, we nonetheless see no reason why this graphic
indicator could not include a graph of values associated with a patient's
disease activity plotted over time, such that disease's progression could be
tracked over a particular time interval.
The term "graph" is short for "graphic formula," and is defined, in
pertinent part, as "a diagram, as a curve, broken line, series of bars, etc.,
representing the successive changes in a variable quantity or quantities."
WEBSTER'S NEW WORLD DICTIONARY OF AMERICAN ENGLISH 588 (3d
College ed. 1993) ("Webster Dictionary"). As shown in this dictionary
definition reproduced below, the accompanying illustration shows a line
graph with mean temperatures plotted from the months of June to October.
112
Appeal2018-004961
Application 13/606,880
graph1 1\Yta:f ar::·n n F h, t· f-:- g -· ·r:Ct..•-'. .,:·t• · -c:-·•t. ·J· .. "f o·· · . . . .. .· ti:, . } o a , • ;;. ~-t or , dJr ,,. ra/#+u.. ormuf.a i I a 1agnu:n1 as a.
· •• curvetthrok.en line) series oJ> bats~ · etc... . ·
. t€pre$e:tltin.g the•·Sl1C{!6SSiV¢ 6b.t(tig{{S ·in a ~- r--,-,,,.-~-ry-c-~~..,......._,. ........
variable qt:1antity or quarttities:•• 2 lrfiath.,
a} a ·-cutve nr surface sho\ving th€ values
of a funetion b) a diagram consisting qt
nodes f-fi1d links aha representihg .fogical
telatit,nships or•· $equ\tnciJs· Of e9ehts .,":;:
Vf}:· to pttt.··il'i ·the t'hrfil of/ or repteseht .
O}\ a graph '---,........--J
. I ----f---,-'+';,.C.--..i
LINE•GRAPH
•tsho,.v itiff:1:n.ean
teh)J)Bt~fttre@f ·.
Webster Dictionary definition of "graph" with line graph illustration
As shown in the dictionary's illustration above, the values of mean
temperature in the line graph are plotted over time, namely a five-month
time period that includes three summer months (June to August) and two
months in autumn (September and October).
i
Given this graphical indication of the temperature's progression over
time, we see no reason why such an indication could not be used to similarly
display values associated with a patient's disease's activity over time as the
Examiner proposes. Such a graph would not only display the disease's
progression over time consistent with Banigan's paragraph 58, but would
also facilitate identifying trends associated with the patient's health
condition including, for example, a seasonal increase in pain. See Banigan
,r 58. Accord Ans. 16 (noting that a seasonal pain increase in Banigan's
paragraph 58 can be indicated by at least two distinct data points in time
113
Appeal2018-004961
Application 13/606,880
corresponding to dates in different seasons). That the graphed values in the
dictionary definition's accompanying illustration increase sharply in the
autumn months of September and October only underscores that such
seasonal trends can be discerned visually by merely inspecting the graph.
Using such a graph to plot data associated with levels of a patient's
disease activity over time as the Examiner proposes, then, would effectively
display (1) a "first visible indication" indicating the disease activity level
corresponding to a first state, namely the state of the disease in summer, and
(2) a "second visible indication" indicating the disease activity level
corresponding to a second state, namely the state of the disease in autumn.
Moreover, both states would be indicated at respective different moments in
time in the past in this graph, namely in the months corresponding to those
respective seasonal states. Appellants' arguments (App. Br. 17-19; Reply
Br. 5-10) are unavailing and not commensurate with the scope of the claim
that does not preclude the Examiner's graph-based interpretation.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 41, and claim 43 not argued separately with particularity.
Claim 42
We also sustain the Examiner's rejection of claim 42. Claim 42
depends from claim 41 and adds that the accessed information comprises
information regarding an outcome measure for the subject patient, where
displaying the first and second visible indications comprises displaying as a
result of the outcome measure being within first and second ranges of
values, respectively, where the ranges correspond to first and second disease
states.
114
Appeal2018-004961
Application 13/606,880
Paragraph 48 of Appellants' Specification explains that an exemplary
outcome measure is "DAS28" that uses data from plural parameters
including conditions of tenderness (pain) and swelling of joints, laboratory
information, and a physician's evaluation of the patient's general health in
terms of an amount of disease activity present in the patient resulting from
examination and observation of the patient. Notably, this passage indicates
that this particular outcome measure is exemplary, and other outcome
measures may be used in other embodiments. Spec. ,r 48.
As shown in Appellants' Figure 3, the GUI 30 includes a window 66
that provides a graphical indication of scores regarding the patient. Spec.
,r 56. In Appellants' Figure 3, the window 66 includes three indicators that
may be selected according to the patient's current DAS28 score that is
calculated by the formula in paragraph 51. The patient's DAS28 scores can
also be graphed at different moments in time in the "DAS28 Trend" window
60 in Appellant's Figure 3. Spec. ,r 58.
Although this description of these exemplary outcome measures
informs our understanding of the recited outcome measures, the term is not
so limited. To the extent that Appellants contend that the recited outcome
measure must be limited to this particular description (see App. Br. 26), we
decline to import that description into the claim. See Phillips v. AWH Corp.,
415 F.3d at 1323.
Rather, an "outcome measure" encompasses any measure, metric,
quantity, or assessment pertaining to an outcome related to a patient's
treatment. Accord Ans. 25 (interpreting "outcome measure" as any data or
measure of the treatment of patients that is used to provide outcome-based
medical treatment).
115
Appeal2018-004961
Application 13/606,880
Given this interpretation, we see no error in the Examiner's findings
in this regard. First, despite Appellants' arguments to the contrary (App. Br.
30-31; Reply Br. 18-21 ), we see no error in the Examiner's finding that the
ability to graph known data is well-known, routine, and conventional
(Ans. 31) as evidenced, for example, by the line graph illustration
accompanying the dictionary definition of "graph" noted previously.
Webster Dictionary 588. Our emphasis underscores the limited scope of the
Examiner's finding in this regard, namely that the ability to graph known
data is well-known, routine, and conventional. Ans. 31. Appellants'
argument, then, that the Examiner did not provide supporting documentary
evidence that "the specific limitations of claim 42 recited above are well-
known, routine, and conventional" (Reply Br. 18) is inapposite to the
narrower scope of Examiner's finding in this regard-a finding that is amply
supported by at least the above-noted dictionary definition.
Nor do we see error in the Examiner's findings at least to the extent
that the cited prior art at least suggests the recited limitations. As noted
previously in connection with claim 41, we find that the cited prior art at
least suggests displaying (1) a "first visible indication" indicating the disease
activity level corresponding to a first state, namely the state of the disease in
summer, and (2) a "second visible indication" indicating the disease activity
level corresponding to a second state, namely the state of the disease in
autumn.
As shown in the Webster Dictionary definition of "graph" on page
588 reproduced below, the accompanying illustration shows a line graph
with mean temperatures plotted from the months of June to October.
116
Appeal2018-004961
Application 13/606,880
graph1 1\Yta:f ar::·n n F h, t· f-:- g -· ·r:Ct..•-'. .,:·t• · -c:-·•t. ·J· .. "f o·· · . . . .. .· ti:, . } o a , • ;;. ~-t or , dJr ,,. ra/#+u.. ormuf.a i I a 1agnu:n1 as a.
· •• curvetthrok.en line) series oJ> bats~ · etc... . ·
. t€pre$e:tltin.g the•·Sl1C{!6SSiV¢ 6b.t(tig{{S ·in a ~- r--,-,,,.-~-ry-c-~~..,......._,. ........
variable qt:1antity or quarttities:•• 2 lrfiath.,
a} a ·-cutve nr surface sho\ving th€ values
of a funetion b) a diagram consisting qt
nodes f-fi1d links aha representihg .fogical
telatit,nships or•· $equ\tnciJs· Of e9ehts .,":;:
Vf}:· to pttt.··il'i ·the t'hrfil of/ or repteseht .
O}\ a graph '---,........--J
. I ----f---,-'+';,.C.--..i
LINE•GRAPH
•tsho,.v itiff:1:n.ean
teh)J)Bt~fttre@f ·.
Webster Dictionary definition of "graph" with line graph illustration
As shown in the dictionary's illustration above, the values of mean
temperature in the line graph are plotted over time, namely a five-month
time period that includes three summer months (June to August) and two
months in autumn (September and October).
i
Although Banigan does not show the graphic display described in
paragraphs 5 8 and 59 or specify its particulars, we nonetheless see no reason
why this graphic indicator could include a graph of values associated with
outcome measures plotted over time, such that outcome measures associated
with patient treatment could be tracked over a particular time interval. Such
a graph would display, among other things, a result of the outcome measure
being within first and second ranges of values corresponding to the first and
second disease states, respectively. Although nothing in the claim requires
that these ranges differ, these ranges ( and values within those ranges) could
117
Appeal2018-004961
Application 13/606,880
be discerned visually by merely inspecting the graph itself as shown, for
example, in the Webster Dictionary definition's accompanying illustration
shown above.
As shown in that illustration, the values in the three summer months
(June to August) range fromjust below 10 to approximately 60. The values
in the autumn months (September and October), however, range from just
above 10 to approximately 90. Therefore, values within these respective
ranges associated with respective "visible indications" for different seasons
can be discerned visually by merely inspecting the graph.
Therefore, we see no error in the Examiner's findings at least to the
extent that the patient data graph itself under the Examiner's proposed
combination would display values within respective ranges for outcome
measures associated with respective seasonal disease states. That Banigan's
graphic display in paragraphs 58 and 59 include not only disease progression
and trends, but also treatment-based information, such as side effects, patient
compliance, and treatment efficacy, only bolsters the Examiner's findings in
this regard, particularly given the scope and breadth of the term "outcome
measure" noted previously.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 42.
Claim 44
We also sustain the Examiner's rejection of independent claim 44
reciting, a medical data processing method that uses hardware processing
circuitry to access (1) first information indicating a level of a patient's
disease activity at plural moments in time in the past, and (2) second
118
Appeal2018-004961
Application 13/606,880
information regarding treatment of the patient for the disease at those
moments in time. A user interface is used to display a graphical
representation of the first information indicating the level of disease activity
with respect to the second information regarding treating the patient for the
disease, and displaying in the graphical representation (1) the patient's past
moments in time, and (2) the first and second information with respect to
those moments.
As shown in Appellants' Figure 10 reproduced below, trends of
patient treatment data are shown in one graph 140, where a line 144
connects outcome measure values ascertained at different moments in time
to show a trend of the patient's disease over time, and line 146 shows a
medication taken by the patient over time. Spec. ,r 106.
FIG.10
Graph 140 in Appellants' Figure 10
119
Appeal2018-004961
Application 13/606,880
As the Specification's paragraph 107 explains, physicians can use the
graph 140 to make future decisions regarding the patient's treatment.
Although this description of this exemplary graph informs our
understanding of the recited graphical representation, the term is not so
limited. To the extent that Appellants contend that the recited graphical
representation must be limited to this particular description (see App. Br.
19-21; Reply Br. 10-12 ), we decline to import that description into the
claim. See Phillips, 415 F.3d at 1323.
On this record, we see no error in the Examiner's rejection essentially
for the reasons noted previously and those indicated by the Examiner. First,
Appellants' arguments regarding the cited prior art allegedly not using
hardware processing circuitry to access the recited information (App. Br.
19-20) are unavailing for the reasons noted previously and those indicated
by the Examiner.
Nor do we see error in the Examiner's finding that the cited prior art
at least suggests accessing (1) the recited "first information," namely
information associated with a disease's progression over time, and (2) the
recited "second information," namely information associated with, among
other things, patient compliance. See Final Act. 31 (citing Banigan ,r 58).
As noted previously, we see no error in the Examiner's finding that
the cited prior art at least suggests using a user interface to display the
recited graphical representation-a representation that the Examiner
interprets as including displaying a graph with multiple lines. See Final
Act. 32. Although Banigan does not show the graphic display described in
paragraph 58 or specify its particulars, we nonetheless see no reason why
this graphic indicator could not include a graph of values associated with
120
Appeal2018-004961
Application 13/606,880
disease activity level and associated treatment plotted over time as the
Examiner proposes, such that these parameters could be tracked over a
particular time interval.
That Banigan's paragraph 58 states that the graphic display presents
information regarding disease progression, patient compliance, symptoms,
side effects, and/or other information from analysis of answers only bolsters
the Examiner's findings in this regard. Our emphasis on "and/or" here is
telling, for this passage contemplates the displaying graphically not only
information pertaining each factor individually, but also the combination of
information pertaining to these respective factors.
Given this teaching considered in light of the graph-based display of
patient information noted previously, we see no reason why the graph under
the Examiner's proposed combination could not include information
pertaining to both a patient's disease activity level and associated treatment
at plural moments in time in the past by, for example, presenting these
values as lines on the graph as the Examiner indicates. See Final Act. 32
(interpreting the recited graphical representation as including displaying a
graph with multiple lines). See Final Act. 32. To the extent that Appellants
contend that such a display would have been uniquely challenging or
otherwise beyond the level of ordinarily skilled artisans (see App. Br. 19-21;
Reply Br. 10-12), there is no persuasive evidence on this record to
substantiate such a contention. See Leapfrog, 485 F.3d at 1162. In short,
such a presentation is a creative step well within the level of ordinarily
skilled artisans and, is, therefore, an obvious variation. See KSR, 550 U.S. at
421 ("A person of ordinary skill is also a person of ordinary creativity, not
an automaton.").
121
Appeal2018-004961
Application 13/606,880
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 44.
Claim 49
We also sustain the Examiner's rejection of claim 49 reciting that the
first information values are values of an outcome measure which are aligned
with respective ones of the moments in time in the graphical representation.
Despite Appellants' arguments to the contrary (App. Br. 22; Reply
Br. 12), we see no error in the Examiner's reliance on the cited prior art for
at least suggesting the recited limitations for the reasons noted previously
and those indicated by the Examiner. Final Act. 32; Ans. 19--20. Therefore,
we are not persuaded that the Examiner erred in rejecting claim 49.
Claim 50
We also sustain the Examiner's rejection of claim 50 reciting that the
moments in time are displayed relative to a first axis of the graphical
representation, and a second axis of the representation includes plural values
indicative of different levels of disease activity.
Despite Appellants' arguments to the contrary (App. Br. 22; Reply
Br. 12), we see no error in the Examiner's reliance on the cited prior art for
at least suggesting the recited limitations for the reasons noted previously
and those indicated by the Examiner. Final Act. 32; Ans. 20-21. Therefore,
we are not persuaded that the Examiner erred in rejecting claim 50.
122
Appeal2018-004961
Application 13/606,880
Claim 51
We also sustain the Examiner's rejection of claim 51 reciting that the
values of the first information and graphically displayed relative to
respective ones of the plural moments in time and the values of the second
axis.
Despite Appellants' arguments to the contrary (App. Br. 23-24; Reply
Br. 12-13), we see no error in the Examiner's reliance on the cited prior art
for at least suggesting the recited limitations for the reasons noted previously
and those indicated by the Examiner. Final Act. 32; Ans. 21-22. Therefore,
we are not persuaded that the Examiner erred in rejecting claim 51.
Claim 52
We also sustain the Examiner's rejection of claim 52 reciting that the
graphical representation depicts trends of at least one of progression and
regression of the disease activity over time relative to the patient's treatment.
Despite Appellants' arguments to the contrary (App. Br. 24; Reply Br.
12-13), we see no error in the Examiner's reliance on the cited prior art for
at least suggesting the recited limitations for the reasons noted previously
and those indicated by the Examiner. Final Act. 32; Ans. 22. Therefore, we
are not persuaded that the Examiner erred in rejecting claim 52.
THE REJECTION OVER MIGLIETTA, BANIGAN, AND KREMER
We also sustain the Examiner's rejection of claim 47 reciting that the
graphical representation shows a time period of use of the medicine and
corresponding values of the first information which comprise different
123
Appeal2018-004961
Application 13/606,880
values of an outcome measure indicating different levels of disease activity
at different moments in time over the time period of the medicine's use.
Despite Appellants' arguments to the contrary (App. Br. 31; Reply Br.
21-23), we see no error in the Examiner's reliance on the cited prior art for
at least suggesting the recited limitations for the reasons noted previously
and those indicated by the Examiner. Final Act. 33-34; Ans. 32.
As noted previously in connection with independent claim 44, we see
no error in the Examiner's finding that the cited prior art at least suggests
using a user interface to display the recited graphical representation-a
representation that the Examiner interprets as including displaying a graph
with multiple lines. See Final Act. 32. Although Banigan does not show the
graphic display described in paragraph 58 or specify its particulars, we
nonetheless see no reason why this graphic indicator could include a graph
of values associated with disease activity level and associated treatment
plotted over time as the Examiner proposes, such that these parameters could
be tracked over a particular time interval.
That Banigan's paragraph 58 states that the graphic display presents
information regarding disease progression, patient compliance, symptoms,
side effects, and/or other information from analysis of answers only bolsters
the Examiner's findings in this regard. Our emphasis on "and/or" here is
telling, for this passage contemplates the displaying graphically not only
information pertaining each factor individually, but also the combination of
information pertaining to these respective factors.
Given this teaching considered in light of the graph-based display of
patient information noted previously, we see no reason why the graph under
the Examiner's proposed combination could not include information
124
Appeal2018-004961
Application 13/606,880
pertaining to both a patient's disease activity level and associated treatment
at plural moments in time in the past by, for example, presenting these
values as lines on the graph as the Examiner indicates. See Final Act. 32
(interpreting the recited graphical representation as including displaying a
graph with multiple lines). See Final Act. 32. To the extent that Appellants
contend that such a display would have been uniquely challenging or
otherwise beyond the level of ordinarily skilled artisans (see App. Br. 31;
Reply Br. 21-23), there is no persuasive evidence on this record to
substantiate such a contention. See Leapfrog, 485 F.3d at 1162. In short,
such a presentation is a creative step well within the level of ordinarily
skilled artisans and, is, therefore, an obvious variation. See KSR, 550 U.S. at
421 ("A person of ordinary skill is also a person of ordinary creativity, not
an automaton.").
We add that treating a patient using medicine is well known as
suggested by not only Banigan in paragraphs 58, 59, 72, and 78, but also in
at least Kremer's paragraphs 14 and 22. As noted previously, Kremer
explains that by using standardized editable forms at each patient follow-up
visit with a physician, comparative effectiveness can be examined to, among
other things, provide more efficient clinical trials of biologics as well as a
richer amount of information on each biologic for use by a participating
physician to base treatment decisions. Kremer ,r 22. Notably, one such
follow-up form is shown in Kremer' s Figures 16A and 16B where an array
of current biologics and other medications are presented to physicians for
selection. Similar medication selections are presented to patients in the
forms in Kremer's Figures 18A to 19B, as well as trials and studies
125
Appeal2018-004961
Application 13/606,880
involving various biologics and medications in the form shown in Kremer's
Figures 25 and 26.
Given these teachings, not only are the time periods that medications
are administered to treat patients used as a basis for treatment decisions, but
also the use of medications in connection with treatment can be compared to
evaluate their effectiveness. Therefore, graphing the time periods that a
certain medicine is used to treat a patient and the corresponding values of an
outcome measure at different moments in time over the use of the medicine
as the Examiner proposes would have been at least an obvious variation
within the level of ordinarily skilled artisans.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 4 7, and claim 46 not argued separately with particularity.
THE REMAINING REJECTION
Because our decision is dispositive regarding patentability of all
appealed claims based on the foregoing prior art references, we need not
reach the merits of the Examiner's decision to also reject claims 1 and 53-58
as anticipated by Scarlat (Final Act. 18-22). See Beloit Corp. v. Valmet Oy,
742 F.2d 1421, 1423 (Fed. Cir. 1984) (approving ITC's determination based
on a single dispositive issue, and not reaching other issues not decided by
the lower tribunal).
126
Appeal2018-004961
Application 13/606,880
CONCLUSION
The Examiner did not err in rejecting (1) claims 1-7, 11-17, 20-29,
31--44, 46, 47, and 49-55 9 under§ 101; (2) claims 1---6, 12, 14, 15, 20-23,
31, 32, 34--40, and 53-58 under 35 U.S.C. § 102 as anticipated by Miglietta;
and (3) claims 7, 11, 13, 16, 17, 24--29, 33, 41--44, 46, 47, and 49-52 under
§ 103.
We do not reach the Examiner's alternative rejection of claims 1 and
53-58 as anticipated by Scarlat.
DECISION
We affirm the Examiner's decision to reject claims 1-7, 11-17, 20-
29, 31--44, 46, 47, and 49-58.
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
9 Although the Examiner omits dependent claims 56-58 from the§ 101
rejection (see Ans. 3-7), we nonetheless leave to the Examiner to reconsider
the eligibility of these claims in light of our decision regarding the
Examiner's§ 101 rejection of other claims and the USPTO's revised
eligibility guidelines. See Guidance, 84 Fed. Reg. at 50-57.
127
Application/Control No. Applicant(s)/Patent Under Patent
Appeal No.
Notice of References Cited
13/606,880 2018-004961
Examiner Art Unit
2179
U.S. PATENT DOCUMENTS
*
Document Number Date
Country Code-Number-Kind Code MM-YYYY Name
A US-
B US-
C US-
D US-
E US-
F US-
G US-
H US-
I US-
J US-
K US-
L US-
M US-
FOREIGN PATENT DOCUMENTS
*
Document Number Date
Country Code-Number-Kind Code MM-YYYY Country Name
N
0
p
Q
R
s
T
NON-PATENT DOCUMENTS
* Include as applicable: Author, Title Date, Publisher, Edition or Volume, Pertinent Pages)
u Webster's New World Dictionary Third College Edition of American English page 588
V
w
X
*A copy of this reference is not being furnished with this Office action. (See MPEP § 707.05(a).)
Dates in MM-YYYY format are publication dates. Classifications may be US or foreign.
U.S. Patent and Trademark Office
PT0-892 (Rev. 01-2001) Notice of References Cited Part of Paper No.
Page 1 of 1
Classification
Classification
THIRD (>OLLECE ED1Tl0N
. - ·- ~-~-
() F AM RR]<: AN< ENC L ls H
J)edicated
toDauidB. Guralnik
lexicographical nwntor
and friend
Copyright:© J99,:l:i19.H:l/ l.ijBS by . .. ..
!iri~;&2?~1~!:~i1•1nt, .......• •••••••!••·•• ·••••••••·••• .• :.;•·•·••·•·············•••·
including the right of l'.GP:t6du~Hon.
in whole or in part in any fobn
'l'his eJit~on. is ~ rnajor revisi;n of lVtbstl;{New • Worlft. Diction0cry®,. \ b~:ltf~ll,?ilf ,,~,f;!!J'Jct~fft:lif~~,i~nt
Prentice Hall General Reference
15 Columbus Circle
New York,W):'JOQ23
A Webst~t;: N;: i~orl~'rdioli
\Vehster'SN)~w WorldT"', Prentice Hall, and colophons an~
registered trademarks of Simon & Schuster, Inc.
Dictioriary "Editorfol Offiges: l"{e111 Worlrl
Dictionaries, 850 Euclid Avenue, .
Cleveland, Ohio 44114
Library of Congress Cataloging-in~Publication Data
Webster's New World dictionary of American. Flnghsh / Victoria
Neufoldt, editor in chi.ef ;Dci.vid R Quraln,ik1 editor.in chief
emeritus.-3rd coH~ge ed. · · · · · · · ·
p. cm. . •••.•• :•
ISBN 0-671-88243-0 (thumb-irrdexed)~.-e-ISBN0-671-88289-9 (plain-
edged). ---ISBN 0-671.-&8572-3 (1eat1lerkraft)
1. English langu:age:-8-Dictionarfos; 2. A:medemiisms-......:Didionar'ies.
I. Neufeldt, Victoria. IL Gu:ra.lnik, David Bernard, 1920-
PE1628.W5633 1993 . . . . .
423--dc20
93-2961
CIP
Database service and p1·incipal typ~.;:;e~t,ingby Lexi--Gomp, Inc., Hudson, Ohio.
The typefaces used areCentwy S~116olbools_1t1d Helvetica.
Manufactured in the UnitedStafoso;(Am~i'fot't
1 2 4 94 95
Gran.yille,..BarkerJgrass-:-tree 588
Graiiville~Bar,ker {gi:an'vil biirkar), •· Hadey • lh:iirlel • 1&71·l~46;
Eng. playwright .. crit!<:. & actor ·
grape (grap) rt,• LME• grgpi replacini... eru:lie.i-.. wfol!erie..\see. Wl"E &
BERRY) < .OFr gffipe, bund, of grapes. < graper; to gathe, with·a hook
. < Frank *ktr;ppr! (OHO. c/'lrc;pf,,.);.a.hook:.for rE ha~e.see GlADLEJ • ~
:any. q.f:,varic~ts: smait· x~und, .&1;oocth--skirn1ed.jufoy.:her~s.,. :g(?:tl:t,tall)'
. pu.rp!e,.,r<:4. Qt green, gr,,wi:ng in .clusters .o:rc, wo,idy VinBs:. grapes are
·e;;tHl raw,,.used J.o .m,~ke .. wine. or l:ke. raisii:)s · 2. any .of
various vines (genus Vitis) of the grape family that b,c,ar :grap~s.
in.eluding: fo" gap& .and .muscfidin~; grapevim,· ·,3.a dilrkpncrr,U.~b: .ro,J,
·4. C«AJ>?;Sx\QT:. cecS.dj •. designatin,;. a.• farl)ily . .{Vitac~ae, ... or;:l,er
Rhmnnales) -0f . diec>tyledonons, te11dril,b"ar1r\g, • .ciinwing, woi:,dy
vine,,, including the Virginia cre"f)er-•• · .: • · • • · • • •.: • . . ·•• : . ·
grape'f.ruit (grap'frm,t') 11 • .[ &v. ,;amed l,i,cause It gNWS •in• duste,$J J
a large, round, edible dtrlis fruit with a pale-y.ellow. riud, juicy pulp,
·•and. a smnew.tllit wur wste •. . 2; .the.,;euaitropical ~~i\tgreen: tr~eJ(!it,n:;;s
panu:/isi) nf thairue fam.iJ:y,.thatJ,.;a,s grapef,'l>lt • · · · · · .·
grape hyae.inth any «Lil g;:c,up obmall; har.d}; Mllx:a,:, pla:uts: {genus
•Mu.~,,,,ri) i;f th€ iily fa,:nily; with spikes of.smi:;~1::iot1;;;~:&1~,~~al;~J!~:; ;f ~mall .• ir;,,· bcilla•f;~lneri; ii,e~
from ·a cru:1:non
grape sugar•cw,;:,1s}~
g~ap.e-.v.ine:.(gr.&r:,..vin-'.? n;_ ·1 any:. of the w,:,nrls.--;;~:ne& that.-bear:grap~s
:«2: a s-ecret n1errns-9f &p~arllng 'f.YFl"f!{.,.'i~:i:~'=i-11.£:·informaiiGn;··ai:ro~ t_he
!3Pl't:ading Qf ne:ws or goss.ip f~r:m ·one f~~~nn t.-~ an?~b-er: 1,v~~h. the-:: in
full grape11ine ·telegraph ;,-3 au ·tmfof bars, etu.; · · ·• ·
~p-resentiRg the--~uc<"?s~i~e ·t'haine--~s -i11 a: ~ r--..c.~-.-...~
variable quimt;ty tlr {lua".tlti;,s 2 Math "
a:) a curve ·,;r •surfa<;e•.showing fhe saJuc-s
~f a fUnction : -bJ a -2,)nSif'ltii.1-g- _f:,f
.r\odes amflii1Ksantl r<,pr~sentfog fogical
telatfonships or ;,t,qt,enc,as of events·~
~ -t;rjtingc
· system unit . which may bf · •a
~P-~Â¥eri~tin~-=i1f-~:t?ht}iu~~e_. a--~yUabl~1,
eu;; .. . . LINE <'_:_ :.:- :_.
graphjic {grff'.i.k) ~. tt L gmp;',i;abfo of pv5nt·
~~~ p~ -~~~~-~~~ :~f W.r;i.~~· :,-_ gpph-~\ _a: 4t~Y-:1D$~ ~!l~i~g: 5- ft!Yf p/r,f!in,
tc, ~t€, orig.~ scratch, 1neis>? <~-l~ bnS? *g~1.~'.m~fl1} _1
des~ljbing O( des<.>:.ribed . .in. r;;alisti.c ann; iusc,ilied, orxeco~d~~ ln.lct:ters of thB ,u~>habet, ,n.eaning.-
~~l:.~>'?~~'.-,1~:- e~~: ~--~~;-i~g_ ~P:~k:i~;i~_:s~_~gk~&ti~'~:--0f ~9.it?f '~J; p~int~d
chara~':Ul~sfgrophic i,(ranihe,1. 5 a} of grapl,s. or dia;imms I>} Blli)\Vn
by graphs or diagrams Also graplW·t::al -graph),gal[ly • fl411, -
!,lraph'ic Jle.8$ n. . •·. . . :• . • • . .• . . ·.. . •· .·· . . • . . • .•...•. : • .• ·:
-graphjic.-(graf~i~J _qor]J{J-i n.ingJor.~n .. f.~J.-?nf~:_v;J:}e~t_4·:f .-:, -z1:f_-0~_ r.~i~ti_ng t.O
a (~p~~iije4}. ~~tho4-o-r .. ~T:fJce~_·fo:t- ret'.f.?.J?~iln~ or_,4f~~c:t:.ib:i-~-g:-[tt;!k-
graphic. st,mographic] Also cgraph"iicat (-al)·/•••.•.··· •· • •. .
grl:)pl')!c. 9 rts 1 any fmm of.visu1!.l ariisticrepresentati()11,esp,.µai.nt
ip:g,:__4~awi.P.g, :-P~iJ:t.ogs:aph5'.~-:~t~\ ~ tho$~Jn:t-.s::i1:) ~·_hi_cl?: imrressions
are ·ptj~t;:eq- frow.sa-rious:-·k~:Ptj.S: ·of bioc-k~,-·:p-l9-tes,:·:~c·reer~ _(·d:-c.:-.-as
engraving, Hch:\ng, lithography, serigraphy, dry point. ·t>.ffset, etc.
gfapnit·,qUalj;:er afreledroni~ equnlfaer with settange,, nffrequenc
.des• whkh)nay be. i,wreased. c,t••redu.ced li,depen&ntly. . ..
grap.b,ic!l (graf'iks)•n;p/,; ii:< u,:w,mcJ [with siHg. · ;,,j i .the. art. of
making dr,ay;,ings, afi in archit1:dure or enginee,ing, in. accor<:lance
:with•mathematicat. rules 2 cakulatwn nf ·stresses, etc, .. fr9m •Sl.lch
drawh1gs 3 a) ? gi-apb.it • <. Gr graph<>in, to write (see
.c_fl~~:'.H}C-~;: frun1 :its: u8e alv writ.ing:-.matf.!r.ial·_;: · :a: ·_gofij. _btac-k~ -1ustro .. us
form ofcarbon: found i.n• naturwand usel·Q!g'y(graf a!';,jeln; ~.l>'igraph,,/ogie, seeµrec.&·LOGY jl thee
:}(
~tudy c,f handwriting, t;sp. as a. elne to Pharactef; .J
graph-ol'.;:Q·.Qis' n. :· . .. ,• : . . .. . . . . .... : . . }\
.,;.Graf)h,io,phone (graf'a-fun•i iarbitrary invetsion)~
~PHONE): < .PfiONOGHAPH £ trali<;Jrd1f/,f,;r. ,m ea,ly t~w.
graph .paper pirper witli • sm;:;ll r\l!Rd · sqi:iares ,nt):
¥,raphli, diagrams. e~. . .• : •. • • .•·• ·• . : ·• · .. .c.:.:C
-graiplly (gra re:,JL ~;;mphia. -c Gr,. wtitiJJg .<. grapf{¢.
cww~nc] ;:on,bJning farrr,;.fotming nouns.. 1,.a proc:,iii
wrifar,g,. recording; •Or· representii,g (in a spe<:ified '1ii
phot,;groph:j]. .. 2. a d!>SN~OL 'I 1 ;ii
2 a Jfot;i,,e emu,isting.oftwo ur mc>re),inged,. l)X)v.,,bW
graBp}n1{ arid: .mov:ing heavy ol>j~t~: .~ a comiug Mf;
hand fight ~ vt. gr.ap'pled; grap'pling t,> grip andls#(
to. use@. <>«AnmL (se.pse 2'i: ;i. t-0. ~trt1gglkegrape,f:
cfotinctli, ,,[grapes:. "1lid. pf ,;onie . .wine,;; .i!"
~agerly: with i;t -n. 1 the act of grasping; grip o~ :C:~
"" a.rms 2 a firm .bokl; eonirol; pos;ressi(Jn :3 Jlw •,S)
seize; rea,h 4 power "f undl2'rst:wi:iing; co~pmh<>"-IBW
,9"'.:;ii:(ajblf! adj, c---Qrasp;er tF . • •·•· ·• ..:./;
g·····r·r.aa ..ss ..p. ·.in·g··· .. iJ.gr·a·•·s··.'1 .. 1 .•iry)·ad.· ·.'J..: ... 1.·th·. at.····gr···a·s•p· s.· 2 •...• ·ea.•g···e .. r. f,.,f.••i·: :.....,SYN. tsRJi'E:IW -gr;,~sp'lng!ly adv, . : . .{,
grass (gras; gra;,} n. tME gras < OKgam;, gra;,'h al;:/t,
-lE-_~ghr~~. :_~!~i(>?J J.-1 :v~~' ~>(y~,i~u~·-p.t~?~~- ~f :t:11~:J~#
are usually .µged far foc,ise $~~
mamuana 6 l[short fo~ grasshopper,. rhym,ug sl~
[Brit.• Slang] an .infm,IIle.T; .stool pigeon =!Jdj, de$\S~
_(P.f.!~~~~' °:r~~~\C3-;11~~~~~) __ -~~I _qi0:~9~u~y+~dqn:~.1f _P.~
niin:ow.l~aves;j<:iinte ryei: b~rley.: oat~: ~:o!'n;::sug~~- cM~!
ghum, and bluegras,s..~vt ... Jto.pt1t(a11. ;n>imal ox:~
pastu;r~ ·<::r · ¥~_32-e ~ t~ ~~~~ ITT'.8SS::}J:'.-€~~ <:p~lf!f :W~{t:~:
((e,:tjl~,;, etc.) OJ! the grnss for bJe.:,e!iiiig t,y .the ,mn/
to faform against, as to theynlic~ ~ ~ 1 j;o lJecc..ml
grass 2 JBtjt, Slang] ti} a<} a<> an fofor111~r; ir/p#
91'a$:& 1 tQ g,:aze .2. to rest oqeti~ :,z3 g<, tti t.h;,},
grass gro.w uni::Jla!r one'~ Jeet to. w~st~ one's Jim;,/
om,QrtuJ).itfes ~,•gr.i&~lik~ adj. .... . . . .·. . .• ..• }
Grass fgrifo: E g,as), $iln,ter (Wilhelm) (glln'te,; l{g~
~~~:-~Y~iJ:~l\_ .. ·_-:_ .:. :.-: : -:· .·.·- _.·:·:_:· .: __ ·.·: __ /\
gr~$~ Cc!Jp a large,· ;vi.es "'°'th {l do~h .m;i.d;, of pla!,tfiht;,$; a,; ,1fj11te!!fi
g.rass-hop-!)l piece of ground with gi'a~s g'r@i
a•fown •···•. ••.. . ·• .. . .. •··· . . . .:.:.;c
grass ro6ts fr't [Collorrf foe commhii. J>eopfo. ,>r((
~!a1 ·· · · • •• • ·•· • ·· · · · ii
grass snake *a/vAA'm!i SNAKR *b)<::llEe~, s"1AKR t
gr~S$ tri\>e a:ny ufa genus IXarithorrhaea) of plank~
family; native to .Auslralfa, wlfh shmt;•.thick, w1c,,:§i
g:ra$slUJeave~: scmre ptodutce f.ragrant l'elScins . /i
grass-tree lgtas'tr~'} adj. designating a family (Xaf~
otd;,,·· J:;ilralEs) •of moni>emyledorn,us plants• • . • ·\/