Ex Parte Kos et al

Patent Trial and Appeal Board

Nov 19, 2018

13313424 (P.T.A.B. Nov. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/313,424 12/07/2011
28661 7590 11/21/2018
Lewis Roca Rothgerber Christie LLP
POBOX29001
Glendale, CA 91209-9001
FIRST NAMED INVENTOR
Michael Kos
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.
MBS-001 8096
EXAMINER
GORT, ELAINE L
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
11/21/2018 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@lrrc.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL KOS and RYAN LEE WEXLER 1
Appeal2017-007933
Application 13/313,424
Technology Center 3600
Before CAROLYN D. THOMAS, MICHAEL J. STRAUSS, and
JOSEPH P. LENTIVECH, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's Final Rejection of claims 1, 2, 4, 10-12, 14, and 20-27, all the
pending claims in the present application. Claims 3, 5-9, 13, and 15-19 are
canceled. See Claims Appendix. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b ).
We AFFIRM.
The present invention relates generally to automatically generating
medical billing codes. See Abstract.
1 Appellants name Medical Billing Systems LLC as the real party in interest
(App. Br. 3).
Appeal2017-007933
Application 13/313,424
Claim 1 is illustrative:
1. A method for transforming a DICOM RT image
file into radiation therapy billing codes, the method comprising:
receiving a DICOM RT image file at a computing
device, the DICOM RT image file including at least one patient
image and having radiation treatment planning data embedded
therein, the radiation treatment planning data identifying at least
a patient identifier, a quantity of radiation sites to be treated, a
quantity of radiation beams to be applied, a type of radiation
beams to be applied, a quantity of beam energy to be applied, a
quantity of blocking sequences to be applied, and an
immobilization device to be employed;
executing instructions stored in memory of the
computing device, wherein the execution of the instructions by
a processor of the computing device:
reads the DICOM RT image file,
transforms the DICOM RT image file into a set of
radiation treatment plan data objects, the set of radiation
treatment plan data objects including at least one subset of
radiation treatment plan data objects, the subset of radiation
treatment plan data objects including at least a first data object
corresponding to the patient identifier, a second data object
corresponding to the quantity of radiation sites, a third data
object corresponding to the quantity of radiation beams, a
fourth data object corresponding to the type of radiation beams,
a fifth data object corresponding to the a quantity of beam
energy, a sixth data object corresponding to the quantity of
blocking sequences, and a seventh data object corresponding to
the immobilization device,
matches the radiation treatment plan data objects
with a corresponding patient based on the patient identifier data
object,
identifies a plurality of billable radiation treatment
plan data objects from among the set of radiation treatment plan
data objects, the billable radiation treatment plan data objects
including at least the first, second, third, fourth, fifth, sixth, and
seventh data objects of the subset of radiation treatment plan
data objects,
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Application 13/313,424
extracts the identified billable radiation treatment
plan data objects from the set of radiation treatment plan data
objects,
determines a treatment complexity level associated
with each extracted billable radiation treatment plan data object,
scores the extracted billable radiation treatment
plan data objects based on the determined complexity levels of
the extracted billable radiation treatment plan data objects, and;
generates one or more radiation therapy billing
codes based on the extracted and scored billable radiation
treatment plan data objects; and
displaying the one or more radiation therapy
billing codes to a user of the computing device through a
display interface communicatively coupled to the computing
device.
Appellants appeal the following rejections:
RI. Claims 1, 2, 4, 10-12, 14, and 20-27 are rejected under 35
U.S.C. § 101 because the claimed invention is directed to patent-ineligible
subject matter (Final Act. 2-3); and
R2. Claims 1, 2, 4, 10-12, 14, and 20-27 are rejected under 35
U.S.C. § I03(a) as being unpatentable over Kresl (US 2011/0106563 Al,
May 5, 2011) and Rosenfeld (US 2005/0159987 Al, July 21, 2005).
We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010)
(precedential).
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Application 13/313,424
ANALYSIS
Re} ection under § 101
Issue: Did the Examiner err in finding that the claims are directed to
patent-ineligible subject matter?
Alice Corp. Pty. v. CLS Bankint'l, 134 S. Ct. 2347 (2014), identifies a
two-step framework for determining whether claimed subject matter is
judicially excepted from patent eligibility under § 101. According to Alice
step one, "[ w ]e must first determine whether the claims at issue are directed
to a patent-ineligible concept," such as an abstract idea. Alice, 134 S. Ct. at
2355. "If the claims are not directed to an abstract idea [or other patent-
ineligible concept], the inquiry ends. If the claims are 'directed to' an
abstract idea, then the inquiry proceeds to the second step of the Alice
framework." McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299,
1312 (Fed. Cir. 2016).
In analyzing whether a claim is directed to an abstract idea, we look to
other decisions where similar concepts were previously found abstract by the
courts. See Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288,
1294 (Fed. Cir. 2016). In this regard, with respect to independent method
claim 1, and similarly, system claim 11 and computer-readable storage
medium claim 21, the Examiner determines that the claims are directed to
the abstract ideas of "using categories to organize, store and transmit
information (Cybeifone), collecting and comparing known information
(Classen) [ and] comparing new and stored information and using rules to
identify options (SmartGene)" (Final Act. 2; see also Ans. 2).
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Application 13/313,424
We find that the Examiner's cogent analysis relying on judicial
examples, shows the Examiner provided an adequate basis for determining
that the claims are directed to an abstract idea.
Here, Appellants mainly challenge the Examiner's determinations on
the ground that like the claims in Enfzsh, the claims "are not 'directed to' an
abstract idea because they focus on ... technologies that make DICOM RT
image themselves ... more useful by adding a function and purpose that did
not previously exist" (App. Br. 18). Specifically, Appellants contend that
"the data embedded in DICOM RT files served no functional benefit from a
billing perspective ... [ now it] imparts additional usefulness ... [by]
transforming the embedded data into functional billing codes" (id., citing
Appellants' Spec. ,r 64).
As such, we look to whether the claims focus on a specific means or
method that improves the relevant technology or are instead directed to a
result or effect that itself is the abstract idea, and merely invoke generic
processes and machinery. See Enfzsh, LLC v. Microsoft Corp., 822 F .3d
1327, 1336 (Fed. Cir. 2016). Here, the Examiner determines, and we agree,
"the plain focus of the claims is not an improvement to computer
functionality itself, but instead on other tasks for which a computer is used
in its ordinary capacity" (Ans. 2), such as "address[ing] a problem ('for
transforming a DICOM RT image file into radiation therapy billing codes')
utilizing computer technology" (id. at 3).
In contrast, the Enfzsh court noted that "[ s ]oftware can make non-
abstract improvements to computer technology just as hardware
improvements can [.]" Enfish, 822 F.3d at 1335. The court put the question
as being "whether the focus of the claims is on [a] specific asserted
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Application 13/313,424
improvement in computer capabilities ... or, instead, on a process that
qualifies as an 'abstract idea' for which computers are invoked merely as a
tool." Id. at 1335-36. In Enfzsh, the court found that the "plain focus of the
claims" there was on "an improvement to computer functionality itself, not
on economic or other tasks for which a computer is used in its ordinary
capacity." Id. at 1336.
The present case is different from Enfzsh because the focus of the
claims here is not on an improvement in computers as tools or upon an
innovative way to use computers or other devices, but is focused on an
independently abstract idea that uses generic and routine equipment as tools;
that abstract idea being collecting/extracting data and transforming the data
into an economic form, i.e., billable codes. That is, here the arguably
innovative technique of the appealed claims is inextricably part of the
abstract idea of manipulating data itself to achieve an economic benefit.
Furthermore, we note that while Appellants' claims may yield a
beneficial result in transforming data from one form to another, a proper
section 101 analysis is not driven solely by usefulness. Instead, the Bilski
court has enunciated the "machine-or-transformation" test (which is
generally addressed under step two of Alice). However, we shall point out
now that the Bilski court 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 merely be insignificant extra-
solution activity." Bilski v. Kappas, 561 U.S. 593, 610-11 (2010) (citation
and internal quotation marks omitted). Here, we do not have a
transformation of physical subject matter but merely an abstract expression
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Application 13/313,424
that is created from converting data from one form to another, which does
not require any tangible output or result. These steps describe nothing more
than the manipulation of data constructs, the paradigmatic "abstract idea."
See In re Warmerdam, 33 F.3d 1354, 1360 (Fed. Cir. 1994). When
considered as a whole, we conclude that claim 1 involves no more than the
manipulation of abstract ideas. See id.
Specifically, the claimed sequence of steps in claim 1 merely cover
employing a computing device to perform functions, such as receiving,
reading, transforming, matching, identifying, extracting, determining,
scoring, generating, and displaying (see claim 1 ). However, information
collection and analysis, including when limited to particular content is
within the realm of abstract ideas. See, e.g., Elec. Power Grp. LLC v.
Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) (holding that "collecting
information, analyzing it, and displaying certain results of the collection and
analysis" are "a familiar class of claims 'directed to' a patent-ineligible
concept."); In re TL! Commc'ns LLC Patent Litig., 823 F.3d 607, 613---614
(Fed. Cir. 2016) (finding the claimed method of classifying and storing
images in an organized manner was a well-established basic concept
analogous to methods of organizing human activity) (server that receives
data, extracts classification infonnation from the received data, and stores
the digital images insufficient to add an inventive concept). As such, the
abstract idea here is not meaningfully different from the ideas found to be
abstract in other cases.
Although Appellants cite various non-controlling cases (see App. Br.
16-18) in support of their aforementioned contention, we find that the
Examiner's analysis is consistent with controlling precedent. In view of the
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above, we agree with the Examiner that the claims are
abstract idea.
directed to an
We now tum to the second step of the Alice framework: "a search for
an 'inventive concept'-i.e., an element or combination of elements that is
'sufficient to ensure that the patent in practice amounts to significantly more
than a patent upon the [ineligible concept] itself."' Alice, 134 S. Ct. at 2355
(alteration in original) (quoting Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 72-73 (2012)).
The Examiner determines that the "additional elements amount to no
more than generic computer components ... performing routine and
conventional activities that are well-understood" (Final Act. 2; see also
Ans. 4--5). Specifically, Appellants' Specification indicates that "a General
Purpose Computer" and various other generic components are being used to
implement the claimed invention (see, e.g., Appellants' Spec. ,r 105). The
Examiner directs our attention to various other portions of Appellants'
Specification (see Final Act. 3). Such an analysis is a factual determination.
See Berkheimer v. HP Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018) ("Whether
something is well-understood, routine, and conventional to a skilled artisan
at the time of the patent is a factual determination.").
We find the Examiner's noting of generic nature of the component
parts recited in the claims provides sufficient evidence of a generic computer
system used to implement the abstraction. See Credit Acceptance Corp. v.
Westlake Services, 859 F.3d 1044, 1057 (Fed. Cir. 2017) ("Significantly, the
claims do not provide details as to any non-conventional software for
enhancing the financing process.). See Intellectual Ventures I LLC v.
Capital One Fin. Corp., 850 F.3d 1332, 1342 (Fed. Cir. 2017) (explaining
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that "[ o ]ur law demands more" than claim language that "provides only a
result-oriented solution, with insufficient detail for how a computer
accomplishes it").
Appellants challenge said determinations on the ground Appellants'
"inventive concept rests on taking advantage of specific data embedded in
nonhuman-readable format within DICOM RT images ... [by] hamess[ing]
that technical feature of DI COM RT images and us[ing] software-based
technologies ... like the patent-eligible technology in DDR Holdings" (App.
Br. 25).
However, Appellants do not direct our attention to anything in the
Specification that shows any specialized computer hardware or other
"inventive" computer components are required. Nor has Appellants
persuasively argued why the functions performed in the claims - generating
billing codes based on the extracted data - are not using routine,
conventional, and well-knm.,vn functions of a generic computer. In re TL!
Communications LLC Patent Litigation, 823 F .3d at 614 ( server that
receives data, extracts classification inforrnation from the received data, and
stores the digital images insufficient to add an inventive concept); Lending
Tree, 656 Fed. Appx. at 996 ("automating conventional activities using
generic technology does not amount to an inventive concept"). Rather, as
pointed out by the Exarniner, the Specification describes generic computer
components perfon11ing generic computer functions that are routine and
conventional, and are performing the normal, basic functions of a computer.
See, e.g., Spec. ,r,r 65-67, 105. See also Electric Power, 830 F.3d at 1355
("Nothing in the claims, understood in light of the specification, requires
anything other than off-the-shelf, conventional computer, network, and
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display technology for gathering, sending, and presenting the desired
information."). "In order for the addition of a machine to impose a
meaningful limit on the scope of a claim, it must play a significant paii in
pennitting the claimed method to be perfmmed, rather than function solely
as an obvious mechanism for permitting a solution to be achieved more
quickly, i.e., through the utilization of a computer for performing
calculations." SiRF Tech., Inc. v. Int 'l Trade Comm 'n, 601 F.3d 1319, 1333
(Fed. Cir. 2010); see also Bancorp Services, L.L.C. v. Sun Life Assur. Co. of
Canada, 687 F.3d 1266, 1277-78 (Fed. Cir. 2012).
Furthermore, we find Appellants' method performed by a computing
device/processor ( claim 1) does not provide a solution "necessarily rooted in
computer technology in order to overcome a problem specifically arising in
the realm of computer networks." DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245, 1257 (Fed. Cir. 2014). Because we find all claims on appeal
merely use a generic computer or processor as a tool which is used in the
way a computer normally functions, we conclude that the claims fail to
impart any discernible improvement upon the computer or processor; nor do
Appellants' claims solve "a challenge particular to the Internet" as
considered by the court in DDR, 773 F.3d at 1256-57.
Accordingly, Appellants have not adequately explained how the
claims are performed such that they are not routine, conventional functions
of a generic computer. The claims at issue do not require any
nonconventional computer or display components, or even a "non-
conventional and non-generic arrangement of known, conventional pieces,"
but merely call for performance of the claimed data collection/extraction,
analysis, and display "on a set of generic computer components." Bascom
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Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1349-
52 (Fed. Cir. 2016). T'l1us, considering the features of the claims,
individually and as an ordered combination, we find there are no additional
elements that transfon11 the nature of the claim into a patent-eligible
application. Alice, 134 S. Ct. at 2355.
Because Appellants' independent claims 1, 11, and 21 2 are directed to
a patent-ineligible abstract concept under the first prong of Alice and do not
recite something "significantly more" under the second prong of the Alice
analysis, we sustain the Examiner's rejection of these claims as well as
respective dependent claims under 35 U.S.C. § 101 as being directed to non-
statutory subject matter in light of Alice and its' progeny.
For the foregoing reasons, Appellants' contentions are unpersuasive
as to error in the rejection under 35 U.S.C. § 101.
Rejection under§ 103(a)
Claims 1, 2, 4, 10-12, 14, and 20-27
In the Final Action, the Examiner makes numerous findings and
concludes that "it would have been obvious to one of ordinary skill in the art
to have modified the teachings of Kresl with ... Rosenfeld with the
motivation to provide mechanism for transmitting medical billing data with
the associated treatment plan" (Final Act. 7).
In the Appeal Brief, Appellants make numerous arguments, such as:
"the Examiner made no mention of any problems ... any proposed benefits
... or anything else ... [instead has] engaged in what appears to have been
2 Alice also confirmed that if a patent's systems claims are no different in
substance from its method claims, they will rise and fall together. 134 S. Ct.
at 2360. The same was true of the Alice patent's media claims. Id.
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impermissible hindsight rather than having articulated a reason for the
proposed combination" (App. Br. 9); Rosenfeld's "cursory reference to
'provid[ing] appropriate output to the billing module 662 to generate an
invoice line item' cannot reasonably be interpreted as 'extract[ing] the
identified billable radiation treatment plan data objects from the set of
radiation treatment plan data objects" (id. at 12); "the scores at issue in
Rosenfeld are determined and input by human users, not determined by a
processor executing instructions" (id. at 13); "any discernible analysis of
treatment complexity level occurring in Rosenfeld is performed and inputted
by a human user and has co connection with embedded data that has been
automatically extracted from a DICOM RT file" (id. at 11); and "[t]he
teachings cited [in Kresl] by the Examiner do not appear to have any nexus
to Appellants' claim language. The teachings at paragraph [0036] do not,
for instance, make any explicit or implicit reference to modifying a
previously generated radiation therapy billing code at all" (id. at 14 ).
Significantly, in reviewing the record, we note that the Examiner's
Answer offers no rebuttal to any of Appellants' arguments under§ 103(a).
This circumstance lead us to determine that because the arguments under
review are unrebutted by the Examiner, they are therefore persuasive. It
follows that we are constrained by the record to not sustain the rejection
under§ 103(a).
DECISION
We affirm the Examiner's§ 101 rejection RI.
We reverse the Examiner's§ 103(a) rejection R2.
Because at least one rejection encompassing all claims on appeal is
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affirmed, the decision of the Examiner is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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