Ex Parte Truyen et al

Patent Trial and Appeal Board

Mar 20, 2017

13392110 (P.T.A.B. Mar. 20, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/392,110 02/24/2012 Roel Truyen 2009P00666WOUS 4978
24737 7590 03/22/2017
PTTTT TPS TNTFT T FfTTTAT PROPFRTY fr STANDARDS
EXAMINER
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROEL TRUYEN
and ALEXANDER ADRIANUS MARTINUS VERBEEK
Appeal 2014-009692
Application 13/392,110
Technology Center 3600
Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and
KENNETH G. SCHOPFER, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Roel Trayen and Alexander Adrianus Martinus Verbeek (Appellants)
seek review under 35 U.S.C. § 134 of a final rejection of claims 1—20, the
only claims pending in the application on appeal. We have jurisdiction over
the appeal pursuant to 35 U.S.C. § 6(b).
1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed May 12, 2014) and Reply Brief (“Reply Br.,” filed September 11,
2014), and the Examiner’s Answer (“Ans.,” mailed July 16, 2014), and Final
Action (“Final Act.,” mailed December 18, 2013).
Appeal 2014-009692
Application 13/392,110
The Appellants invented an instance of clinical decision support.
Specification 1:3.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A system for clinical decision support, comprising:
[1] an identifying subsystem that identifies a plurality of
patient information types used in a decision rule of a clinical
decision support system;
[2] an accessing subsystem that
accesses at least one data repository
and
determines whether patient information elements
relating to a particular patient corresponding to each of
the patient information types are present in the
repository;
[3] a completeness determining subsystem that
determines the completeness of the available information
relating to the particular patient based on
the information types used in the decision rule
and
whether the patient information elements
corresponding to the information types are present in the
data repository;
and
[4] a presenting subsystem for presenting an indication of
the completeness of the available information relating to the
particular patient.
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Application 13/392,110
The Examiner relies upon the following prior art:
Mountain US 2005/0020903 A1 Jan. 27,2005
Krishnan US 2010/0083159 A1 Apr. 1,2010
Claims 1—20 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Krishnan and Mountain.
Claims 1—20 stand rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter.
ISSUES
The issues of statutory subject matter turn primarily on whether
medical data gathering and diagnosis is an abstract concept. The issues of
obviousness turn primarily on whether the prior art applied describes
determining the completeness of the available information relating to the
particular patient based on the information types used in the decision rule
and whether the patient information elements corresponding to the
information types are present in the data repository.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
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Appeal 2014-009692
Application 13/392,110
Facts Related to the Prior Art
Krishnan
01. Krishnan is directed to providing automated
diagnosis and decision support for medical imaging and in
particular, to CAD (computer-aided diagnosis) systems and
applications for cardiac imaging, which implement machine-
learning techniques to enable automated diagnosis of heart
diseases and conditions such as cardiomyopathy, coronary artery
disease and other heart-related medical conditions, automated
assessment of regional myocardial function through wall motion
analysis, and other automated decision support functions to assist
physician workflow. Krishnan para. 2.
02. Krishnan describes automated diagnosis and
decision support for cardiac imaging. More specifically, Krishnan
describes extracting and analyzing relevant features/parameters
from a collection of patient information (including image data
and/or non-image data) of a subject patient to provide automated
assistance to a physician for various aspects of physician
workflow including, for example, automated assessment of
regional myocardial function through wall motion analysis,
automated diagnosis of heart diseases and conditions such as
cardiomyopathy, coronary artery disease and other heart-related
medical conditions, and other automated decision support
functions to assist physician workflow. Krishnan para. 20.
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Appeal 2014-009692
Application 13/392,110
Mountain
03. Mountain is directed to indicators, and more specifically to a
segmented progress indicator. Mountain para. 1.
04. Mountain describes displaying a segmented progress indicator,
and displays a first section of a segmented progress indicator
indicating a progress of the first step included in the operation.
Mountain para. 43.
ANALYSIS
Claims 1—20 rejected under 35 U.S.C. § 103(a) as unpatentable over
Krishnan and Mountain
We are persuaded by Appellants' argument that the prior art applied
fails to describe determining the completeness of the available information
relating to the particular patient based on the information types used in the
decision rule and whether the patient information elements corresponding to
the information types are present in the data repository.2 App. Br. 8. The
Examiner applies Mountain as describing the recited completeness. Final
Act. 5.
Mountain describes completeness of process progress, however,
instead of completeness of information. Mountain makes no determination
of the completeness of its data, but rather shows the percentage progress of a
2 This limitation is commonly recited in all independent claims 1, 10, 12 and
18.
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Appeal 2014-009692
Application 13/392,110
process towards completion. The Examiner does not cite any portion of the
applied art describing a determination of completeness of information
needed.
Claims 1—20 rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter
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, [] determine whether the claims at issue are
directed to one of those patent-ineligible concepts. [] If so, we
then ask, “[w]hat else is there in the claims before us? [] To
answer that question, [] consider the elements of each claim
both individually and “as an ordered combination” to determine
whether the additional elements “transform the nature of the
claim” into a patent-eligible application. [The Court] described
step two 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.”
Alice Corp., Pty. Ltd. v CLS Bank Inti, 134 S.Ct. 2347, 2355 (2014)
(citing Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132
S.Ct. 1289 (2012)).
To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept.
While the Court in Alice made a direct finding as to what the claims
were directed to, we find that this case’s claims themselves and the
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Appeal 2014-009692
Application 13/392,110
Specification provide enough information to inform one as to what they are
directed to.
The preamble to claim 10 recites that it is a method of clinical
decision support. The four steps in claim 10 result in presenting an
indication of the completeness of the available information relating to the
particular patient. The Specification at 1:2 recites that “[t]he invention
relates to clinical decision support.” Thus, all this evidence shows that claim
10 is directed to supporting medical decision making, i.e. medical data
gathering and diagnosis.
It follows from prior Supreme Court cases, and Bilski in particular,
that the claims at issue here are directed to an abstract idea. Like the risk
hedging in Bilski, the concept of medical data gathering and diagnosis is a
fundamental medical practice long prevalent in our system of medicine. The
use of data gathering and diagnosis is also a building block of the scientific
method practiced for centuries. Thus, medical data gathering and diagnosis,
like hedging, is an “abstract idea” beyond the scope of §101. See Alice
Corp. Pty. Ltd. at 2356.
As in Alice Corp. Pty. Ltd., we need not labor to delimit the precise
contours of the “abstract ideas” category in this case. It is enough to
recognize that there is no meaningful distinction in the level of abstraction
between the concept of risk hedging in Bilski and the concept of medical
data gathering and diagnosis at issue here. Both are squarely within the
realm of “abstract ideas” as the Court has used that term. See Alice Corp.
Pty. Ltd.at 2357.
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Appeal 2014-009692
Application 13/392,110
The remaining claims merely describe the nature of the completeness
or how it might be portrayed. We conclude that the claims at issue are
directed to a patent-ineligible concept.
The introduction of a computer into the claims does not alter the
analysis at Mayo step two.
the mere recitation of a generic computer cannot
transform a patent-ineligible abstract idea into a patent-eligible
invention. Stating an abstract idea “while adding the words
‘apply it’” is not enough for patent eligibility. Nor is limiting
the use of an abstract idea “‘to a particular technological
environment.’” Stating an abstract idea while adding the words
“apply it with a computer” simply combines those two steps,
with the same deficient result. Thus, if a patent’s recitation of a
computer amounts to a mere instruction to “implement [t]” an
abstract idea “on ... a computer,” that addition cannot impart
patent eligibility. This conclusion accords with the preemption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of “additional
feature[e]” that provides any “practical assurance that the
process is more than a drafting effort designed to monopolize
the [abstract idea] itself.”
Alice Corp. Pty. Ltd., 134 S.Ct. at 2358 (citations omitted).
“[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea [] on a generic
computer.” Alice Corp. Pty. Ltd., 134 S.Ct. at 2359. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to identify types, access a repository to determine whether the
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Application 13/392,110
needed information is available and present an indication of such amounts to
electronic data query and retrieval—one of the most basic functions of a
computer. All of these computer functions are well-understood, routine,
conventional activities previously known to the industry. In short, each step
does no more than require a generic computer to perform generic computer
functions.
Considered as an ordered combination, the computer components of
Appellants’ method add nothing that is not already present when the steps
are considered separately. Viewed as a whole, Appellants’ method claims
simply recite the concept of medical data gathering and diagnosis as
performed by a generic computer. The method claims do not, for example,
purport to improve the functioning of the computer itself. Nor do they effect
an improvement in any other technology or technical field. Instead, the
claims at issue amount to nothing significantly more than an instruction to
apply the abstract idea of medical data gathering and diagnosis using some
unspecified, generic computer. Under our precedents, that is not enough to
transform an abstract idea into a patent-eligible invention. See Alice Corp.
Pty. Ltd. at 2360.
As to the structural claims, they
are no different from the method claims in substance.
The method claims recite the abstract idea implemented on a
generic computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long “wam[ed] ... against” interpreting § 101 “in
ways that make patent eligibility ‘depend simply on the
draftsman’s art.’”
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Application 13/392,110
Alice Corp. Pty. Ltd. at 2360.
We are not persuaded by Appellants' argument that “a method that
improves the efficacy, efficiency, or accuracy of the practitioner who is
using the clinical decision support system is a meaningful application of the
asserted ‘abstract idea’.” Reply Br. 2. Medical diagnosis per se improves
the efficacy, efficiency, or accuracy of the practitioner. Indeed many
abstract ideas improve efficacy, efficiency, or accuracy.
We are not persuaded by Appellants’ argument that
providing a determination regarding the sufficiency of
the available information for a particular patient with regard to
enabling a clinical decision support system to reach a reliable
decision is a meaningful and practical process that substantially
enhances the use of a clinical decision support system for
enabling a practitioner to make more reliable and informed
decisions regarding the care of each patient through the use of
this process and system.
Reply Br. 3. Again, many abstract ideas substantially enhance the use of
clinical decisions for enabling a practitioner to make more reliable and
informed decisions regarding the care of each patient. At bottom, the claims
are no more than conceptual advice to a practitioner to see whether he has
complete information upon which to proceed. The claims do not recite any
particular technological improvement for ascertaining such completeness.
CONCLUSIONS OF LAW
The rejection of claims 1—20 under 35 U.S.C. § 103(a) as unpatentable
over Krishnan and Mountain is improper.
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Appeal 2014-009692
Application 13/392,110
The rejection of claims 1—20 under 35 U.S.C. § 101 as directed to
non-statutory subject matter is proper.
DECISION
The rejection of claims 1—20 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). See 37 C.F.R.
§ 1.136(a)(l)(iv) (2011).
AFFIRMED
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