Ex Parte Kim et al

Patent Trial and Appeal Board

Mar 15, 2019

13488586 (P.T.A.B. Mar. 15, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/488,586 06/05/2012
89980 7590 03/19/2019
NSIPLAW
P.O. Box 65745
Washington, DC 20035
FIRST NAMED INVENTOR
Ha-Young Kim
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.
012053.0045 5607
EXAMINER
DEJONG, ERIC S
ART UNIT PAPER NUMBER
1631
NOTIFICATION DATE DELIVERY MODE
03/19/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
pto@nsiplaw.com
pto.nsip@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HA-YOUNG KIM, KYOUNG-GU WOO, and
JI-HYUN LEE 1
Appeal2018-002473
Application 13/488,586
Technology Center 1600
Before RICHARD M. LEBOVITZ, JEFFREY N. FREDMAN, and
TA WEN CHANG, Administrative Patent Judges.
CHANG, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
diagnostic factor set determination apparatus used to predict the occurrence
of a disease or assess the severity of an ongoing disease, which have been
rejected as directed to a judicial exception without more, failing to comply
with the written description requirement, and indefinite. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify the Real Party in Interest as Samsung Electronics Co.,
Ltd. (Appeal Br. 5.)
Appeal2018-002473
Application 13/488,586
STATEMENT OF THE CASE
The Specification states that "[ d]iagnostic factors included in personal
examination data may vary depending on the situation in which a patient is
examined, the hospital in which the patient examination is conducted, and
the area or country in which the patient examination is conducted." (Spec. ,r
3.) According to the Specification, if disease diagnosis were made based on
a disease model without taking into consideration diagnostic factors from
personal examination data not included in the disease model, prediction of
the occurrence or severity of the disease may not be accurate. (Id. ,r 4.) The
invention relates to an apparatus for determining "a diagnostic factor set" for
a disease according to a sum of "disease weights" of a plurality of diagnostic
factors that is in the personal examination data but not in the selected disease
model, wherein a disease weight refers to "an influence of a diagnostic
factor on [the] target disease." (Id. ,r,r 5, 44.)
Claims 1, 3-11, 13, 14, 17-23, and 25 are on appeal. Claim 1 is
illustrative and reproduced below:
1. A diagnostic factor set determination apparatus
used to predict the occurrence of a disease or assess a severity
of an ongoing disease, comprising:
a non-transitory computer readable memory configured
to store instructions; and
one or more processors configured to execute the
instructions to[]acquire personal examination data comprising
diagnostic factors including a blood pressure, a cholesterol
level, and a body weight through a user interface without
attachment to a body and transmitting the personal examination
data wirelessly to the one or more processors;
select a disease model from a disease model
database, the selected disease model comprising more of the
diagnostic factors that are included in the personal examination
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data compared to other disease models from the disease model
database;
determine a diagnostic factor set according to a
sum of disease weights of a first group of the diagnostic factors
that are included in the personal examination data and not in the
selected disease model in order to fully reflect the diagnostic
factors of the acquired personal examination data in a disease
diagnosis, compare a first threshold value with the sum of the
disease weights of the first group of the diagnostic factors and
compare a second threshold value with the sum of the disease
weights of the first group of the diagnostic factors; and
determine the diagnostic factors included in both
the personal examination data and the selected disease model to
be diagnostic factors of a new disease model in response to the
sum of the disease weights of the first group being equal to or
greater than the first threshold value, and determine a diagnostic
factor in the first group that is more related to the target disease
compared to other diagnostic factors in the first group to be a
diagnostic factor in response to the sum of the disease weights
of the first group being less than the second threshold value,
wherein the one or more processors create the new
disease model using a determined diagnostic factor set, and
register the new disease model in the disease model database,
and store the new disease model in the non-transitory computer
readable memory.
(Appeal Br. 35 (Claims App.).)
The Examiner rejects claims 1, 3-11, 13, 14, 17-23, and 25 under 35
U.S.C. § 101 as being directed to a judicial exception (i.e., a law of nature, a
natural phenomenon, or an abstract idea) without including additional
elements that are sufficient to amount to significantly more than the judicial
exception itself. (Ans. 2.)
The Examiner rejects claims 1, 3-11, 13, 14, 17-23, and 25 under 35
U.S.C. § 112(a) or pre-AIA 35 U.S.C. § 112, first paragraph, as failing to
comply with the written description requirement. (Ans. 4.)
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Application 13/488,586
The Examiner rejects claims 1, 3-11, 13, 14, 17-23, and 25 under 35
U.S.C. § 112(b) or pre-AIA 35 U.S.C. § 112, second paragraph, as being
indefinite. (Ans. 6.)
I.
Issue
The Examiner rejects claims 1, 3-11, 13, 14, 17-23, and 25 as being
directed to an abstract idea without significantly more. The Examiner finds
that the claims "present essentially a method that employs the algorithmic
processing of existing information (personal examination data) in order to
generate additional information." (Ans. 3.) The Examiner further finds that,
other than the abstract idea, the claims are limited only by "the use of
conventional and generic computer implementation means" and thus do not
recite significantly more than the abstract idea itself. (Id.)
Appellants contend that the claims are not directed to an abstract idea
and, in any event, recite significantly more than the alleged abstract idea.
(Appeal Br. 13-27.)
Appellants have not separately argued the claims. 2 We therefore limit
our analysis to claim 1 as representative. The issue with respect to this
2 Notwithstanding the generic statement in the briefs that "[e]ach of the
claims is being argued separately under a separate subheading ... and thus
... stands or falls alone" (Appeal Br. 13), Appellants' only argument with
respect to independent claim 1 7 is that "claim 17 is allowable for the same
reasons stated ... for independent claim 1." (Appeal Br. 31-32.) Likewise,
Appellants' only argument for each dependent claim is the dependent claim
is patentable "at least for the reasons independent claim [ 1 or 17] is
patentable, and further, because it recites additional limitations." (Id. at 29-
33.) This does not suffice as separate argument of the claims. Cf In re
Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) ("[T]he Board [has] reasonably
interpreted Rule 41.37 to require more substantive arguments in an appeal
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rejection is whether claim 1 is directed to an abstract idea without
significantly more.
Analysis
\Ve analyze this case under the framework set fmih by the Supreme
Court in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566
U.S. 66 (2012), and applied by our reviewing court in Ariosa Diagnostics,
Inc. v. Sequenom, Inc., 788 F.3d 1371 (Fed. Cir. 2015). As the Ariosa court
exp fained:
In Mayo . .. , the Supreme Court set forth a framework for
distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts. First, we
determine whether the claims at issue are directed to a
patent-ineligible concept. . . . If the answer is yes, then
we next consider the elements of each claim both
individually and "as an ordered combination" to determine
whether additional elements "transform the nature of the
claim" into a patent-eligible application .... The Supreme
Court has described the second step of this analysis as a
search for an "inventive concept"-i.e., an element or
combination of elements that is "sufficient to ensure that
the patent in practice amounts to significantly more than a
patent upon the [ineligible concept] itself."
Id. at 1375.
Jviayo Step One: vVhether Claim I Is Directed to Abstract Idea
\Ve begin with the first step of the lvf ayo test, namely whether a claim
is "directed to" a patent-ineligible concept. On January 7, 2019, the Director
brief than a mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art.").
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of the USPTO issued the "2019 Revised Patent Subject rviatter Eligibility
Guidance" ("Revised Guidance"), which provides fmiher details regarding
how the Patent Office analyzes patent-eligibility questions under 35 U.S.C. §
101. Revised Guidance, 84 Fed. Reg. 50-57 (Jan. 7, 2019). Under the
Revised Guidance, the first step of the lviayo test (i.e., Step 2A of the
Revised Guidance) is ''a two-pronged inquiry." id. at 54. In prong one, we
evaluate whether the claim recites a judicial exception, such as laws of
nature, natural phenomena, or abstract ideas. Id. The Revised Guidance
explains that
the abstract idea exception includes the following
groupings of subject matter, when recited as such in a
claim limitation(s) (that is, when recited on their own or
per se):
(a) concepts-mathematical
relationships, mathematical formulas or equations,
mathematical calculations;
Mathe ma ti cal
(b) Certain methods of organizing human
activity-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); and
( c) Mental processes---concepts performed in
the human mind (including an observation, evaluation,
judgment, opinion).
Id. at 52 (footnotes omitted). If the claim recites a judicial exception, the
clairn is further analyzed under prong two, which requires "evaluat[ion of]
whether the claim recites additional e1ements that integrate the exception
into a practical application of that exception."
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First Prong o,fRevised Guidance Step 2A
With respect to the first prong of Step 2A of the Revised Guidance,
we agree with the Exarniner that claim l recites a patent-ineligible abstract
idea. In particular, claim l recites a processor configured to perform steps of
( 1) "select[ing] a disease model ... comprising more of the diagnostic
factors that are included in the personal examination data compared to other
... models from the ... database," (2) "determin[ing] ... a sum of disease
weights of ... factors that are included in the personal examination data
[but] not in the selected disease model," (3) "compar[ing] a first threshold
value with the sum of the disease weights" and "a second threshold value
with the sum of the disease weights," (4) "determin[ing] ... the diagnostic
factors of a new disease model in response to the sum of the disease weights
... being equal to or greater than the first threshold value" and/or "being
less than the second threshold valuet and (5) "creat[ing] a new disease
model using a determined diagnostic factor set" (Appeal Br. 35 (Claims
App.).) All of these steps, however, are rnental processes, i.e., concepts that
may be perfon11ed in the human mind. See Revised Guidance, 84 Fed. Reg.
at 52. Indeed, all of these diagnostic steps are mental processes similar to
those routinely performed by a physician improving patient diagnoses,
including acquiring personal examination data of patients, analyzing the data
using diagnostic models obtained through expert experience, balancing the
diagnostic factors to determine an accurate diagnosis, and remernbering the
interplay of the factors for diagnoses of later patients. See, e.g., In re Afeyer,
688 F.2d 789, 793 (CCPA 1982). Such mental processes are not patentable.
Aiayo, 566 U.S. at 71.
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Second Prong (~/Revised Guidance Step 2A
The second prong of Step 2A asks whether the claims as a whole
integrates the judicial exception into a practical application of the exception.
Revised Guidance, 84 Fed. Reg. at 54. We find that claim 1 does not recite
additional elements that integrate the recited abstract idea into a practical
application of the idea. The only elements of claim 1 that are not mental
processes are '"a non-transitory computer readable memory configured to
store instructions"; "one or more processors"; "a user interface without
attachment to a body"; "a disease rnode1 database"; and the steps of
acquiring persona] examination data, transmitting such data wirelessly to
other processors, registering a new disease model, and storing the new
disease model in computer memory.
As for the limitations relating to memory, processors, user interface,
and database, these elements merely implement on a computer the abstract
idea of determining a diagnostic factor set for a target disease based on
personal examination data and existing disease models. (Appeal Br. 35
(Claims App.).) As explained in the Revised Guidance, a judicial exception
has not been integrated into a practical application if the additional elements
of the claim "merely includes instructions to implement an abstract idea on a
computer, or merely uses a computer as a tool to perform an abstract idea."
Revised Guidance, 84 Fed. Reg. at 55. In a case with claims to "an
ineligible discovery, together with "well-known techniques to execute the
claimed method," [the Federal Circuit] held that the claims were directed to
a natural law" and therefore ineligible. Athena Diagnostics, Inc. v. lvlayo
Collaborative Services, LLC, 915 F.3d 743, 751 (Fed. Cir. 2019). Similarly,
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acquiring personal examination data and transmitting the data to processors
(i.e., collecting information for analysis), and registering a new disease
model and storing the model in computer memory (Le., presenting the
results of the analysis), are insignificant extra-solution activities that do not
integrate a judicial exception into a practical application. That is, the use of
computers alone in a diagnostic method is not sufficient to impose a
meaningful limit on the judicial exception. Revised Guidance, 84 Fed. Reg.
at 55 ( explaining that "insignificant extra-solution activity" does not
integrate judicial exception into practical application); see also Elec. Po\'1/er
Grp., LLCv. Alstom S.A., 830 F.3d 1350, 1353-1354 (Fed. Cir. 2016)
(stating that "collecting information, including when limited to particular
content ... , [is J within the realm of abstract ideas" and further stating that
"merely presenting the results of abstract processes of collecting and
analyzing information, without more ... , is abstract as an ancillary part of
such collection and analysis").
Mayo Step Two: Whether Claim 1 Recites "Significantly More"
Having determined that claim 1 is directed to a patent-ineligible
abstract idea, we next consider the second step of the Mayo test, namely
whether claim 1 recites "an element or combination of elements that is
'sufficient to ensure that the patent in practice amounts to significantly more
than a patent upon the [ineligible concept] itself.'" Ariosa, 788 F.3d at 1375
( citation omitted). We find that it does not: As discussed above, the only
elements of claim 1 other than the abstract ideas thernselves are generic
computer components (i.e., memory, processor, user interface, and database)
and/or fi.mctionalities (i.e., receiving, sending, processing, and storing data).
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These elements whether considered individually or in combination do not
add significantly more to the abstract ideas recited in claim l (i.e., the steps
for determining the diagnostic factors to be included in a new disease model,
which are mental processes).
Appellants' Arguments
Appellants first contend that the claims are not directed to abstract
ideas because "no courts have found 'a diagnostic factor set determination
apparatus used to predict the occurrence of a disease or assess a severity of
an ongoing disease' to be an abstract idea." (Appeal Br. 14-15.) \Ve are not
persuaded because Appellants read the relevant case law too narrowly. 3 As
discussed above, the claims are directed to mental processes, i.e., "steps that
can be performed in the human mind, or by a human using a pen and paper,"
which courts have held to be unpatentable. See, e.g., CyberS'ource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1371----1373 (Fed. Cir. 2011). Thus,
claims directed to such mental processes are not patentable, even if the
spec(flc mental process claimed has not been the subject of a court decision.
Appellants also contend that the claims on appeal are distinguishable
from Digitech image Technologies, LLC v. Electronics for Imaging, Inc.,
758 F.3d 1344 (Fed. Cir. 2014), which the Examiner cites for support and
which found claims directed to "device profiles" to be patent-ineligible,
because the claims on appeal are "directed to a tangible, physical diagnostic
factor set determination apparatus" and "creat[es] a new entity (i.e., a new
3 We also note that Bilski characterized the ineligible method in Meyer as "a
computerized method for aiding a neurologist in diagnosing patients."
Bilski, 545 F.3d at 1001 (citing Meyer, 688 F.2d at 789).
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disease model)." (Appeal Br. 15; see also id. at 16 ("Applicants are reciting
a[n] ... apparatus ... that generates new entities (i.e., a disease model).")
We are not persuaded. \iVhile it is tn1e that in Dt/!,itech the claimed
device profile was not expressly tied to a physical apparatus such as an
image processor, Digitech, 758 F.3d at 1349, 1351, recitation of a machine
in a claim does not necessarily mean that a recited abstract idea is integrated
into a practical application or that the claims are patent eligible. Instead, the
Federal Circuit has explained that "the use of a specific machine ... must
impose meaningful limits on the claim's scope" and not be "insignificant
extra-solution activity" in order to impart patent-eligibility. In re Bilski, 545
F.3d at 961-962. See also Revised Guidance, 84 Fed. Reg. at 55 (explaining
that additional element that merely use computer as tool to perform abstract
idea or only adds insignificant extra-solution activity to abstract idea does
not integrate abstract idea in practical application). As discussed above, the
additional elements in the claims on appeal that recite tangible, physical
apparatus merely implement an abstract idea on a computer and do not
impose meaningful limits on the scope of the claims.
Likewise, we are not persuaded by Appellants' attempt to distinguish
Digitech by arguing that the claims on appeal "creat[es] a new entity (i.e., a
new disease model)." Certain of the claims at issue in Digitech also creates
a new entity, i.e., a device profile. Digitech, 758 F.3d at 1350----1351
(method claims on appeal "describes [a] process for generating [a] device
profile"). Nevertheless, the Digitech court found that these claims are not
patent eligible because the process of generating the device profile mere1y
involves "taking existing infon11ation ... and organizing ... this information
into a new form." Id. at 1351. The new disease model recited in the claims
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on appeal similarly results from the organization of existing information
(i.e., personal examination data and a disease model) into a new form
because the diagnostic factor set for the new disease model merely
comprises diagnostic factors selected from the personal examination data
and the selected existing disease model.
Appellants next contend that the claims on appeal are not directed to
an abstract idea because they are "directed to a specific computer rather than
a generic (general purpose) computer." (Appeal Br. 20.) In particular,
Appellants contend that the claims recite "a diagnostic factor set
determination apparatus using specialized processors with real-world
applications in disease diagnosis that ... arneliorates the functions of the
computer hardware that it is tied to." (Appeal Br. 16; see also id. at 20.)
\Ve are not persuaded. As discussed above, none of the hardware
recited in the claim---- e.g., computer readable memory, processors, and user
interface---- are specialized. In fact, the Specification explicitly states that the
invention may be implernented using general purpose cornputers:
The units described herein may be implemented using
hardware components and software components, such as
microphones, amplifiers, band-pass filters, audio to digital
convertors, and processing devices. A processing device
may be implemented using one or more general-purpose
or special purpose computers, such as, for example, a
processor, a controller and an arithmetic logic unit, a
digital signal processor, a microcomputer, a field
programmable array, a programmable logic unit, a
microprocessor or any other device capable of responding
to and executing instructions in a defined manner.
(Spec.~ 87 (emphasis added).)
Instead, the gravamen of Appellants' argument appears to be that the
claims require a general purpose computer to execute the specific recited
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instructions, which renders the computer a "specialized" processor. For
instance, Appellants cite lviPEP § 2181 for the proposition that '"when the
disclosed stnicture is a computer programmed to carry out an algorithm, the
disclosed structure is not the general purpose computer, but rather that
special purpose computer programmed to perform the disclosed algorithm."
(Appeal Br. 20 (internal quotation marks omitted).)
\Ve are not persuaded. rv1PEP § 2181 relates to means-plus-function
claims and thus has limited if any relevance to the determination of whether
a claim recites rnore than implementation of an abstract idea on a generic
computer. In contrast, courts have consistently held that, in a§ 101 analysis,
mere use of a cornputer as a tool to execute instructions that are no more
than abstract ideas, i.e., what .Appellants refer to as a "specific" computer,
does not confer patent eligibility on an otherwise ineligible claim. Credit
Acceptance C01p. v. Westlake Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017)
(explaining that Federal Circuit cases "have made clear that mere
automation of manual processes using generic computers does not constitute
a patentable improvement in computer technology" because in such cases
"the focus of the claims is not on ... an improvement in computers as tools .
. . but on ... independently abstract ideas that use computer as tools")
(internal quotation marks and citations omitted); see also Revised Guidance,
84 Fed. Reg. at 55.
'-'
Appellants contend the claims are not directed to an abstract idea
because "the daimed solution is necessarily rooted in cornputer technology"
and that the claims recite "an innovation in computer technology, namely
creating a new disease model, which in this case reflects an improvement in
the functioning of the computer itself:[] i.e.[,] in enhanced capabilities of the
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computer." (Appeal Br. 19.) In the same vein, Appellants contend that the
claims on appeal are similar to the claims found to be patentable in Enfish,
LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016), in that the
Specification "disparages conventional methods of disease diagnosis" and
the claims "recite a specific type of data structure designed to improve the
way a computer retrieves, processes, and stores data in memory" and are "an
innovation in computer technology itself." (Appeal Br. 17, 19-20.)
We are not persuaded for reasons similar to those already discussed:
Other than generic computer components and functionality (e.g., memory,
processors, database, and sending, receiving, and storing data), the
limitations in claim 1 may all be performed in the human mind and are thus
not "necessarily rooted in computer technology."
Appellants' citation to Enfish is similarly inapposite. The claims in
Enfish were directed towards a self-referential database, which is "an
innovative logical model for a computer database" in comparison to the
relational database that is standard at the time. Enfish, 822 F .3d at 1330.
Thus, the claims in Enfish recited "a specific improvement to the way
computers operate." Id. at 1336. In contrast, the alleged invention is not
directed to a particular data structure or other improvement to the computer;
rather, the alleged invention relates to the data that is stored in the data
structure and the computer is "invoked merely as a tool." Id.
As to Appellants' contention that the claims relate to a novel and
superior method of disease diagnosis, we note that an abstract idea is not
patent eligible even if it is unknown and superior to conventional methods at
the time of the invention. Parker v. Flook, 437 U.S. 584, 594--595 (1978)
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(holding claim directed to "new and presumably better method for
calculating alarm limit" to be patent ineligible).
Appellants further contend that the claims are directed to "a specific
implementation of a solution to a problem," have "real-world applications in
disease diagnosis," and ''do not simply recite ... 'generalized steps
performed on a computer using conventional computer activity."' (Appeal
Br. 16. 17: see also id. at 19 ( arguing that '"the claimed solution is
/ / ' (...., (....,
necessarily rooted in computer technology in order to overcome a problem
specifically arising in the realm of disease diagnosis").)
We are not persuaded. \Ve have already explained above why the
claims are directed to mental processes perfonned on a computer using
conventional computer activity such as sending, receiving, processing, and
storing data. vVhile it is true that the claims on appeal are limited to the field
of disease diagnosis, claims directed to abstract ideas do not become patent
eligible merely because they link the idea to a particular technological
environment or field of use. C:Y: Diamond v. Diehr, 450 U.S. 175, 191
(1981) (explaining that "[a] rnathematica1 formula as such 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"); see also Credit Acceptance Corp., 859 F .3d at
1047 (claim directed to abstract idea not patent eligible even though claim
are limited to "real-world applications" relating to consumer financing).
Finally, Appellants contend that the claims on appeal are similar to
those found patent eligible in A1cRO, Inc. v. Bandai Narnco Games America,
Inc., 837 F.3d 1299 (Fed. Cir. 2016), because the ''features of the present
claims recite specific computer-implemented rules that improve an
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underlying technological process (i.e. disease diagnosis)" and because
disease diagnosis performed by a human, like animation performed by
humans in Ji!fcRO, "would ... be based on merely subjective determinations,
rather than using the particularly claimed rufos." (Appeal Br. 18.)
\Ve are not persuaded. The claims in A1cRO relate to "automating part
of a preexisting 3-D animation method. AfcRO, 837 F.3d at 1303. In that
case, the Federal Circuit found the claims to be directed to patent eligible
subject matter in part because "the automation goes beyond merely
'organizing [existing] information into a new form" but rather "uses a
combined order of specific ru1es that renders information into a specific
format that is then used to create desired results: a sequence of synchronized,
animated characters." Id. at 1315 (internal quotation marks omitted). In this
case, as discussed above, the recited processor instructions do no more than
organize existing information (i.e., personal examination data and existing
disease model) into a new form.
Appellants contend that, even assuming claim 1 is directed to an
abstract idea, the Examiner "fails to explain why other elements of the
claims are not 'significantly more' than an abstract idea." (Appeal Br. 20,
21.) We are not persuaded. The Examiner explained that "the claimed
system is simply an application of the non-statutory, abstract method ... ,
limited only [by] the use of conventional and generic computer
implementation means." (Ans. 3.) "Conventional and generic computer
implementation means" do not add significantly more to the abstract idea.
Credit Acceptance (~orp., 859 F.3d at 1056 (expfaining that "[t]he use and
anangement of conventional and generic computer components ... --------such
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as a database, user terminal, and server-------do not transform the claim, as a
whole, into 'significantly more' than a claim to the abstract idea itself').
Appellants contend that the additional elements of the claim are in
fact significantly more than an abstract idea because they "offer
improvements to [a] technology/technical field, offer improvements to the
functioning of the computer itself, [and] apply the judicial exception with, or
by use of, a particular machine." (Appeal Br. 20) Appellants likewise
contend that the claims on appeal recite significantly more than "an
algorithmic process[ing] of existing information in order to generate
additional infonnation." (Appeal Br. 21.) We are not persuaded for all the
reasons already discussed above.
Appellants contend that the claims on appeal are similar to DDR
Holdings v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014), SiRF Tech.
Inc. v. int 'l Trade Comm., 601 F.3d 1319 (Fed. Cir. 2010), Research Corp.
Technologies v. lviicrosoft Corp., 627 F.3d 859 (Fed. Cir. 2010\ and
Diamond v. Diehr, 450 U.S. 175 (1981 ), because the claims require "use of a
speciaHzed processor and other physical components" and result in "a novel
. 1 . -f' • "(" lB ?l ?6-) mampu at10n or trans101111at10n. ,1-1..ppea r. - ----- .
\Ve are not persuaded. As an initial matter and as discussed above,
we find that claim l does not require use of specialized processors and only
recites generic computer components. Moreover, even if claim 1 involved
the use of a particular machine or the transformation of an article, the
Federal Circuit has explained that "the use of a specific machine or
transformation of an article must impose meaningful limits on the claim's
scope to impart patent-eligibility," and "the involvement of the machine or
transformation in the claimed process must not be insignificant extra-
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solution activity." In re Bilski, 545 F.3d at 961-962. Thus, for the reason
discussed above, claim 1 would not be patent eligible even if Appellants can
identify some involvement of a machine or some transformation in the
claim.
\Ve also disagree that the claims on appeal are similar in relevant
respects to the claims found patent eligible in DDR !foldings, SiRF Tech.
Inc., Research Corp. Technologies, or Diehr. The claims in DDR Holdings
relate to an e-commerce system that generates a composite web page
retaining a host website's "look and feel" but display content from a third
party (e.g., a third party product infonnation) when a user clicks on a
hyperlink on a host website (e.g., a third-party rnerchant advertisement).
Thus, the claims are "necessarily rooted in computer technology in order to
overcome a problem specifically arising in the realm of computer networks,"
namely the "challenge of retaining control over the attention of the
customer" in view of the "ephemeral nature of an Internet 'location' [and]
the near-instantaneous transport between these locations rnade possible by
standard Internet communication protocols." DDR Holdings, 773 F.3d at
1257-----1258. In contrast, the "problem" of detennining a diagnostic factor set
for a target disease is not specific to the realm of computer networks and
may be solved generally in the same way whether or not done by a computer
or by a human being. Unlike in DDR Holdings, therefore, the computer in
clairn 1 is merely used as a tool to perform an abstract idea.
Similarly, the Federal Circuit in SiRF Tech. found that "the methods
at issue could not be perfonned without the use of a GPS receiver," because
the claims were directed to calculating the absolute position of a GPS
receiver, using data (i.e., pseudoranges, or distances or estimated distances
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between satellites and a GPS receiver) that "can exist only with respect to a
particular GPS receiver that receives the satellite signals." SiRF Tech., 601
F .3d at 1332. The Federal Circuit further found that is no evidence that the
calculations recited in the claims "can be performed entirely in the human
mind." ld. at 1333. This is not the situation with respect to claim 1.
Personal examination data, disease models, and diagnostic factor sets all
may exist independent of the user interface, processor, memory, and
database recited in claim 1, and, as already discussed above, the steps recited
in claim 1 is capable of being performed entirely in the human mind.
Research Corp. and Diehr are likewise inapposite here. The Federal
Circuit has explained that "the claimed processes in Research Cmp. plainly
represented improvements to computer technologies in the marketplace" and
that the method claimed therein, "which required the manipulation of
computer data structures (the pixels of a digital image and the mask) and the
output of a modified computer data structure (the hal:ftoned image), was
dependent upon the computer components required to perform it." Bancorp
Servs. L.L.C. v. Sun Life Assur. Co. of Canada, 687 F.3d 1266, 1279 (Fed.
Cir. 2012). As we have explained, in the instant case the recited computer
merely "permits one to [ determine a diagnostic factor set for a disease] more
efficiently than one could mentally." Id. "Using a computer to accelerate an
ineligible mental process does not make that process patent eligible." Id.
Diehr involves claims to a rnethod of manufacturing "precision
molded articles form selected synthetic rubber cornpounds." Diehr, 450
U.S. at 179, fn. 5. UnHke the instant claim, therefore, the claim in Diehr
integrates the judicial exception recited in its claims ( a mathematical
formula) into a practical application. Id. at 187 (stating that "an application
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of a law of nature or mathematical formula to a known structure or process
may deserv[e] ... patent protection"); see also id. 84 Fed. Reg. at 55.
Appellants contend that the claims on appeal are distinguishable from
Gottschalkv. Benson, 409 U.S. 63 (1972), Parker v. Flook, 437 U.S. 584
(1978), Bilski v. Kappas, 561 U.S. 593 (2010), and Alice Corp. Pty. Ltd. v.
CLS Bank Int 'l, 573 U.S. 208 (2014), because the claims are not "directed to
known or general mathematical formulas or algorithms" but are rather
"directed towards a tangible improvement in disease diagnosis." (Appeal
Br. 26.) We are not persuaded. While claim 1 may not be directed to a
mathematical formula or algorithm, it is directed to a mental process, which
courts have consistently held to be an abstract idea. See, e.g., Mayo, 566
U.S. at 71. Furthermore, assuming for argument's sake that the abstract idea
allows for superior disease diagnosis, we have already noted that an abstract
idea is not patent eligible even if it is superior to conventional methods.
Flook, 437 U.S. at 594--595.
Finally, Appellants contend that claim 1 is not patent ineligible
because it does not preempt the use of the recited steps in all fields, "but
only as the steps relate to an improvement of disease diagnosis." (Appeal
Br. 26-27.) We are not persuaded. "While preemption may signal patent
ineligible subject matter," the Federal Circuit has explained that "the
absence of complete preemption does not demonstrate patent
eligibility." Ariosa, 788 F.3d at 1379. Instead, "[w]here a patent's claims
are deemed only to disclose patent ineligible subject matter under
the Mayo framework, ... preemption concerns are fully addressed and made
moot." Id; see also Flook, 437 U.S. at 586 (holding claims directed to
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mathematical formula to be invalid even though claims "do not ... cover
every conceivable application of the formula").
Accordingly, we affirm the Examiner's rejection of claim 1 as
directed to a patent-ineligible abstract idea without significantly more.
Claims 3-11, 13, 14, 17-23, and 25, which are not separately argued, fall
with claim 1. 37 C.F.R. § 4I.37(c)(l)(iv). 4
II.
Issue
The Examiner has rejected claims 1, 3-11, 13, 14, 17-23, and 25 as
failing to comply with the written description requirement. The Examiner
rejects claims 1, 3-11, 13, 14, 17-23, and 25 under 35 U.S.C. § 112(b) or
pre-AIA 35 U.S.C. § 112, second paragraph, as being indefinite. (Ans. 6.)
The same issue is dispositive for both rejections; we therefore discuss them
together.
4 Appellants' Reply Brief, submitted on January 2, 2018, largely repeats
arguments already made in the Appeal Brief; these arguments are not
persuasive for the reasons already discussed. To the extent Appellants
makes new arguments, see, e.g., Reply Br. 9-12, 14--16 (discussing Thales
Visionix Inc. v. United States, 850 F.3d 1343 (Fed. Cir. 2017), BASCOM
Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir.
2016), and Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288
(Fed. Cir. 2018)), Appellants have not persuasively explained why these
arguments could not have been raised in the Appeal Brief. Thus, we find
that the arguments have been waived. See Ex parte Nakashima, 93 USPQ2d
1834 (BPAl 2010) (informative) (arguments and evidence not timely
presented in the Principal Brief will not be considered when filed in a Reply
Brief, absent a showing of good cause explaining why the argument could
not have been presented in the Principal Brief); Ex parte Borden, 93
USPQ2d 1473, 1477 (BP Al 2010) (informative) (explaining that "the Rules
do not require the Board to take up a belated argument that has not been
addressed by the Examiner, absent a showing of good cause").
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The Examiner concludes that the claims recite "functionally defined
'nonce' terms" and thus contain means plus function language. (Ans. 5.)
Citing Biomedino, LLC v. Waters Technology Corp., 490 F.3d 946 (Fed. Cir.
2007), the Examiner finds that the Specification is inadequate because it
"only reiterates functional language that is correlated to a generic means as
recited in the ... claims" and "fails to specify any structure corresponding to
the means." (Id. at 5---6.) For the same reasons - i.e., that "there is no
corresponding disclosure of what structures are encompassed by [the
functionally defined] means [in the claims]" - the Examiner also finds the
claims to be indefinite.
Appellants contend that defining processors in functional terms "does
not make the processors fail to meet the written description requirement."
(Appeal Br. 27.) Appellants contend that the Examiner has not explained
why the claims are indefinite "from the perspective of one of ordinary skill
in the art." (Id. at 28.) Appellants further contend that neither the written
description nor the indefiniteness rejection is applicable to the claims
because the claims do not contain means-plus-function elements and/or
because the claims recite processors as hardware. (Appeal Br. 27-29.)
The issue with respect to this rejection is whether the claims contain
means-plus-function limitations and, if so, whether the Specification
discloses structures that correspond to the means for performing the claimed
functions.
Analysis
We find that the Examiner has not established a prima facie case that
the claims fail to comply with the written description requirement or are
indefinite.
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The claims on appeal are computer-implemented claims, and we agree
with the Examiner that in such cases "simply disclosing a computer as the
structure designated to perform a particular function" is insufficient to
satisfy the requirements of section 112, paragraph 6. However, "structure"
in computer-implemented claims need not be hardware but may consist of an
algorithm for performing a recited function. Aristocrat Technologies
Australia Pty Ltd. v. Int'! Game Tech., 521 F.3d 1328, 1333 (Fed. Cir.
2008). The Federal Circuit has explained that "'algorithm' in computer
systems has broad meaning" and "encompasses 'in essence a series of
instructions for the computer to follow,"' or "'a step-by-step procedure for
accomplishing a given result"' Typhoon Touch Technologies, Inc. v. Dell,
inc., 659 F.3d 1376, 1384 (Fed. Cir. 2011). The Federal Circuit has also
explained that an algorithm may be expressed "'in any understandable terms
including as a mathematical fonnula, in prose, or as a flow chart, or in any
other manner that provides sufficient structure,"' and that '"the patent need
only disclose sufficient stn1eture for a person of skill in the field to provide
an operative software program for the specified function." Id at 1385.
The Examiner appears to assert that all of the instructions recited in
the claims - e.g., acquiring personal examination data, transmitting said data
to processors, selecting disease model from a database based on the overlap
between the disease model and personal examination data, determining a
diagnostic factor set for a new disease model by comparing the sum of
disease weights of certain diagnostic factors to a threshold value - are
merely functions for which corresponding structures must be provided in the
Specification. (Ans. 5 ("The claims ... recite generalized computer
embodiments encompassed by generic ·processor configured to
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produce whatever functions/etlects the claims describe.") The Examiner
does not explain, however, why these recited instn1ctions and similar
instructions disclosed in the Specification (see, e.g., Spec. Fig. 6 and
accompanying text) do not constitute an algorithm for detennining the
diagnostic factor set, i.e., a step-by-step procedure for detennining the
diagnostic factor set for a disease that would allow a skilled artisan to
provide an operative software program for determining a diagnostic factor
set.
Accordingly, because we find that the Examiner has not established a
prima facie case that the Specification or the claims fail to provide
corresponding structures for a means-plus-function limitation, we reverse the
Examiner's rejection of claims 1, 3-11, 13, 14, 17-23, and 25 as lacking in
written description and indefinite.
SUMMARY
For the reasons above, we affirm the Examiner's rejection of claims 1,
3-11, 13, 14, 17-23, and 25 as directed to a patent-ineligible abstract idea
without significantly more. We reverse the Examiner's rejection of claims
1, 3-11, 13, 14, 17-23, and 25 as lacking in written description and/or
indefinite.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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