Ex Parte Kotanko et al

Patent Trial and Appeal Board

Mar 16, 2017

12959017 (P.T.A.B. Mar. 16, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/959,017 12/02/2010 Peter Kotanko 3806.1012-002 4241
87516 7590 03/20/2017
Hamilton, Brook, Smith & Reynolds, P.C.
530 Virginia Road
P.O.Box 9133
Concord, MA 01742
EXAMINER
BURGESS, JOSEPH D
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
03/20/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER KOTANKO, STEPHAN THIJSSEN,
LEN USVYAT, and NATHAN W. LEVIN
Appeal 2015-0066991
Application 12/959,017
Technology Center 3600
Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
MICHAEL W. KIM, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 1—5 and 9. We
have jurisdiction to review the case under 35 U.S.C. §§ 134 and 6.
We REVERSE.
The invention relates generally to identifying a patient undergoing
hemodialysis treatments at increased risk for death. Spec. 2,11. 10-11.
1 The Appellants identify is Fresenius Medical Care Holdings, Inc. as the
real party in interest. Appeal Br. 3.
Appeal 2015-006699
Application 12/959,017
Claim 1 is illustrative:
1. A method of identifying and treating a patient undergoing
periodic hemodialysis treatments at increased risk for
death, comprising:
a) determining at least one clinical or biochemical
parameter associated with an increased risk of death
of the patient and monitoring said parameter
periodically before and/or after the patient is
undergoing hemodialysis treatments;
b) determining a significant change in the rate of change
of the at least one clinical or biochemical parameter
from a retrospective record review of parameter
values of the patient determined at prior
hemodialysis treatments;
c) identifying the patient as having an increased risk for
death because the patient has the significant change
in the rate of change of the at least one clinical or
biochemical parameter; and
d) treating the patient having an increased risk for death
within a sufficient lead time to decrease the patient's
risk of death.
Claims 1—5 and 9 are rejected under 35 U.S.C. § 101 as reciting
ineligible subject matter in the form of an abstract idea.
Claims 1—5 and 9 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Casscells (US 6,454,707 Bl, iss. Sept. 24, 2002), Mori
(US 2006/0226079 Al, pub. Oct. 12, 2006), and Sommo
(US 2009/0082684 Al, pub. Mar. 26, 2009).
ANALYSIS
Rejection under 35 U.S.C. §101
We are persuaded by Appellants’ arguments that the claimed method
is not an abstract idea, because the claims “have the particular practical
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Application 12/959,017
application of identifying a patient as having an increased risk of death and
treating the patient to decrease the risk of death.” Appeal Br. 6; see also id.
at 4—6; Reply Br. 2^4.
The patent statute provides that a patent may be obtained for “any new
and useful process, machine, manufacture, or composition of matter, or any
new and useful improvement thereof.” 35 U.S.C. § 101. Yet the Supreme
Court has “long held that this provision contains an important implicit
exception: Laws of nature, natural phenomena, and abstract ideas are not
patentable.” Alice Corp. Pty. Ltd. v. CLSBank Int’l, 134 S. Ct. 2347, 2354
(2014) (quoting Ass ’n for Molecular Pathology v. Myriad Genetics, Inc.,
133 S. Ct. 2107, 2116 (2013)). The Court has, thus, made clear that
“[phenomena of nature, though just discovered, mental processes, and
abstract intellectual concepts are not patentable, as they are the basic tools of
scientific and technological work.” Gottschalk v. Benson, 409 U.S. 63, 67
(1972).
The Supreme Court in Alice reiterated the two-step framework, set
forth previously in Mayo Collaborative Services v. Prometheus Labs., Inc.,
132 S. Ct. 1289, 1300 (2012), “for distinguishing patents that claim laws of
nature, natural phenomena, and abstract ideas from those that claim patent-
eligible applications of these concepts.” Alice, 134 S. Ct. at 2355. The first
step in that analysis is to “determine whether the claims at issue are directed
to one of those patent-ineligible concepts.” Id. If so, the second step is to
consider the elements of the claims “individually and ‘as an ordered
combination”’ to determine whether the additional elements “‘transform the
nature of the claim’ into a patent-eligible application.” Id. (citing Mayo, 132
S. Ct. at 1291, 1297). In other words, the second step is to “search for an
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Application 12/959,017
‘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. (citingMayo, 132 S.
Ct. at 1294).
In rejecting claim 1, the Examiner finds claimed steps a) to c) can be
performed with mental thought alone, and treating step d) is not a
“transformation of a patient,” because “the treatment step can be anything;
i.e. not necessarily having to do with hemodialysis.” Answer 4. The
Examiner, therefore, concludes “the claim is effectively [directed] to the
general correlation and the abstract idea of doing the significant change
analysis.” Id. We disagree.
Independent claim 1 is directed to identifying a patient undergoing
hemodialysis at increased risk of death, by identifying a change in rate of
change of a monitored clinical or biochemical parameter associated with an
increased risk of death of a patient, and then treating the identified patient to
decrease the risk. Although the claim includes steps that can be performed
mentally, “treating the patient... to decrease the patient’s risk of death” is
not a phenomenon of nature, mental process, or abstract intellectual concept.
This is a specific type of treatment, as opposed to, for example, treating only
to alleviate pain. The claim as a whole is directed to more than just steps
capable of being performed mentally.
Therefore, the claim, considered as a whole, is not directed merely to
an abstract idea, as defined under step one of the Alice analysis, because it
includes treating a patient to reduce a risk of death.
In addition, if one were to consider the claim under the second step of
the Alice analysis, the treatment of a patient to reduce the risk of death
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Application 12/959,017
functions to “effect an improvement in [another] technology or technical
field,” namely medicine. Alice, 134 S. Ct. at 2359.
For these reasons, we do not sustain the rejection of claim 1, nor of
dependent claims 2—5 and 9 under 35U.S.C. § 101.
Rejection under 35 U.S.C. § 103(a)
We are persuaded by Appellants’ argument that the cited art of record,
alone or in combination, fails to disclose detecting a change in a rate of
change of a parameter, because each of Casscells and Mori merely detect a
change, or perhaps a rate of change, but not a change in a rate of change.
Appeal Br. 8—9; see also Reply Br. 6—7.
The Examiner reasons “changes in temperature measurements over a
period of time are interpreted as significant change in the rate of change.”
Answer 6. We find this interpretation to be unreasonable, because it ignores
key claim language. Appellants point out “the Examiner’s interpretation of
Casscells is akin to interpreting, in mathematical terms, a first derivative
(e.g., velocity) as a second derivative (e.g., acceleration or deceleration).”
Reply Br. 6. We agree with Appellants. The Examiner has not established a
case of obviousness of the claims because the “change of rate of change”
language is not disclosed by a change in temperature over a single period of
time.
For this reason, we do not sustain the rejection of claim 1, nor of
dependent claims 2—5 and 9 that were rejected along with claim 1.
DECISION
We reverse the rejection of claims 1—5 and 9 under 35 U.S.C. § 101.
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Application 12/959,017
We reverse the rejection of claims 1—5 and 9 under 35 U.S.C.
§ 103(a).
REVERSED
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