Ex Parte Truyen et alDownload PDFPatent Trial and Appeal BoardMar 20, 201713392110 (P.T.A.B. Mar. 20, 2017) Copy Citation 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. 13/392,110 02/24/2012 Roel Truyen 2009P00666WOUS 4978 24737 7590 03/22/2017 PTTTT TPS TNTFT T FfTTTAT PROPFRTY fr STANDARDS EXAMINER 465 Columbus Avenue RAJ, RAJIV J Suite 340 Valhalla, NY 10595 ART UNIT PAPER NUMBER 3686 NOTIFICATION DATE DELIVERY MODE 03/22/2017 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 following e-mail address(es): marianne. fox @ philips, com debbie.henn @philips .com patti. demichele @ Philips, com 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. 2 Appeal 2014-009692 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. 3 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. 4 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. 5 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 6 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. 7 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 8 Appeal 2014-009692 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.’” 9 Appeal 2014-009692 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. 10 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 11 Copy with citationCopy as parenthetical citation