Ex Parte Van Zon et al

Patent Trial and Appeal Board

Dec 31, 2018

13996175 (P.T.A.B. Dec. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/996,175 06/20/2013 Cornelis Conradus Adrianus Maria Van Zon
24737 7590 01/03/2019
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus A venue
Suite 340
Valhalla, NY 10595
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.
2010P01179WOUS 1695
EXAMINER
HOLCOMB, MARK
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
01/03/2019 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):
patti. demichele@Philips.com
marianne.fox@philips.com
katelyn.mulroy@philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CORNELIS CONRADUS ADRIANUS MARIA VAN ZON,
CHARLES LAGOR, WILLIAM LORD,
and
STEPHEN HERMANN RUDOLF THEISS 1
Appeal2017-010610
Application 13/996, 17 5
Technology Center 3600
Before CARLA M. KRIVAK, HUNG H. BUI, and JON M. JURGOV AN,
Administrative Patent Judges.
KRIVAK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1, 3-13, 16, and21-30, which are all the claims
pending in the application. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 Appellants identify the real party in interest as KONINKLIJKE PHILIPS
ELECTRONICS N.V. (see App. Br. 1).
Appeal2017-010610
Application 13/996, 17 5
STATEMENT OF THE CASE
Appellants' invention is directed to a method and apparatus for
learning and optimizing clinical care protocols and guidelines by
"determining one or more most common sequences of care steps" in medical
workflow data, and integrating the determined sequences into an established
clinical protocol (Spec. 2: 17-21; Title).
Claims 1, 11, and 25 are independent. Independent claim 1,
reproduced below, is exemplary of the subject matter on appeal.
1. A method for use in conjunction with an
information technology (IT) infrastructure of a medical
institution, said method comprising:
receiving workflow data for a plurality of patients,
wherein the workflow data includes a plurality of care steps and
relations there between for each of the patients;
identifying one or more sequences of same care steps
from the workflow data, wherein the identification includes
determining one or more most common sequences of same care
steps from the workflow data, wherein the identified sequences
of the same care steps include the most common sequences of
the same care steps;
selecting one of the identified sequences of the same care
steps;
integrating the selected sequences of the same care steps
into an established clinical protocol; and
displaying the integrated, selected sequence of the same
care steps on a display device;
wherein the determination of the most common
sequences of the same care steps includes:
grouping sequences of the same care steps of the
workflow data based on clinically valid reasons explaining
variances in the sequences of the same care steps, wherein the
most common sequences of the same care steps include a most
common sequence of the same care steps for each group.
2
Appeal2017-010610
Application 13/996, 17 5
REJECTI0NS 2 and REFERENCES
The Examiner rejected claims 9 and 10 under 35 U.S.C. § 112, fourth
paragraph, as being of improper dependent form.
The Examiner rejected claims 1, 3-13, 16, and 21-30 under
35 U.S.C. § 101 as directed to non-statutory subject matter.
The Examiner rejected claims 1, 6, 9-11, 16, 22, 2 6, and 2 7 under
35 U.S.C. § I03(a) based upon the teachings of Bocionek (US
2002/0099273 Al; published July 25, 2002), Arning (US 2005/0209841 Al;
published Sept. 22, 2005), and Inokuchi (US 2010/0105989 Al; published
Apr. 29, 2010).
The Examiner rejected claims 3, 8, and 12 under 35 U.S.C. § I03(a)
based upon the teachings of Bocionek, Arning, Inokuchi, and Grigsby (US
2005/0215867 Al; published Sept. 29, 2005).
The Examiner rejected claim 4 under 35 U.S.C. § I03(a) based upon
the teachings of Bocionek, Arning, Inokuchi, Grigsby, and Tice (US
2003/0182163 Al; published Sept. 25, 2003).
The Examiner rejected claim 5 under 35 U.S.C. § I03(a) based upon
the teachings of Bocionek, Arning, Inokuchi, Grigsby, Tice, and Shen (US
2003/0212580 Al; published Nov. 13, 2003).
The Examiner rejected claim 7 under 35 U.S.C. § I03(a) based upon
the teachings ofBocionek, Arning, Inokuchi, and Sadiq (US 2004/0133457
Al; published July 8, 2004).
2 Claims 1, 3-13, 16, and 21-30 were rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite (Final Act. 3--4 ). However, this
rejection was withdrawn in the Examiner's Advisory Action (mailed
December 20, 2016), and is no longer pending on appeal (Advisory Act. 2;
Ans. 28 (confirming rejection was withdrawn)).
3
Appeal2017-010610
Application 13/996, 17 5
The Examiner rejected claims 13 and 23 under 35 U.S.C. § 103(a)
based upon the teachings of Bocionek, Arning, Inokuchi, and Tice.
The Examiner rejected claim 21 under 35 U.S.C. § 103(a) based upon
the teachings of Bocionek, Arning, Inokuchi, and Shen.
The Examiner rejected claims 24 and 25 under 35 U.S.C. § 103(a)
based upon the teachings of Bocionek, Arning, Inokuchi, Tice, and Shen.
The Examiner rejected claims 28-30 under 35 U.S.C. § 103(a) based
upon the teachings ofBocionek, Arning, Inokuchi, Grigsby, and Sadiq.
ANALYSIS
Rejection of claims 9 and 10 under 35 US. C. § 112, fourth paragraph
The Examiner rejected claims 9 and 10 under 35 U.S.C. § 112, fourth
paragraph, as improper dependent claims drawn to an apparatus capable of
performing the method of claim 1, the dependent claims being "conceivably
... infringed by mere possession of the apparatus without performing any
particular method steps at all" (Final Act. 4--5). We do not agree.
We agree with Appellants' arguments that claims 9 and 10 are proper
as they further limit claim 1 (App. Br. 30-31 ). As Appellants explain, claim
1 addresses a method of processing workflow data, claim 9 further limits
claim 1 to one or more processors programmed to perform this method, and
claim 10 further limits claim 1 to a computer readable medium carrying
software which controls processor(s) to perform the method (App. Br.
30-31; Reply Br. 19). The processor of claim 9 is, therefore, dependent on
the method of claim 1. Similarly, the software of claim 10 is dependent on
the method of claim 1. Additionally, the recitations of dependent claims 9
and 10 specify further limitations (processor programmed to peiform the
4
Appeal2017-010610
Application 13/996, 17 5
method, and software controlling a processor to perform the method) of the
subject matter claimed in base claim 1. See 35 U.S.C. § 112, fourth
paragraph ("a claim in dependent form shall contain a reference to a claim
previously set forth and then specify a further limitation of the subject matter
claimed"). Thus, the processors of claims 9 and 10 have patentable weight
(contrary to Examiner's assertion, see Ans. 55-56).
We, therefore, do not sustain the Examiner's rejection of claims 9 and
10 under 35 U.S.C. § 112, fourth paragraph.
Rejection of claims 1, 3-13, 16, and 21-30 under 35 US.C. § 101
Appellants contend the Examiner erred in determining the subject
matter of claims 1, 3-13, 16, and 21-30 is patent-ineligible under 35 U.S.C.
§ 101 for the reasons that: the claims are not abstract as they "solve
problems in a specific technical area using specific technical components"
and "describe how to better integrate a sequence of care steps into an
established clinical protocol specifically using an IT infrastructure" (Reply
Br. 16; App. Br. 22-23); the claims are not analogous to "claims in Electric
Power Group [that] gathered data, but did not solve a problem in a specific
technical area" (Reply Br. 16); and the claims describe technological
improvements similar to McRO and Amdocs (Reply Br. 13-15; App. Br.
22-24 (citing Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288
(Fed. Cir. 2016); McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d
1299 (Fed. Cir. 2016))). We do not agree.
Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347
(2014) identifies a two-step framework for determining whether claimed
subject matter is judicially-excepted from patent eligibility under § 101.
5
Appeal2017-010610
Application 13/996, 17 5
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 directed to a patent-ineligible
concept, the second step in the analysis considers the elements of the claims
"individually and 'as an ordered combination"' to determine whether there
are additional elements that "'transform the nature of the claim' into a
patent-eligible application." Id. (citing Mayo, 566 U.S. at 79). In other
words, the second step "search[es] 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. ( citing Mayo, 566 U.S. at 72-73).
Initially we note Appellants argue claims 1, 3-13, 16, and 21-27
together (App. Br. 22, 24--26, 29; Reply Br. 14). We select claim 1 as
representative at points in our discussions herein. Independent claims 11
and 25, and dependent claims 3-10, 12, 13, 16, 21-24, 26, and 27 stand or
fall with claim 1 (see 37 C.F.R. § 4I.37(c)(l)(iv)).
The Examiner determines claim 1 is directed to an abstract idea of
"collect[ing] information (workflow data), analyz[ing] it (determines most
common sequence and groups based on valid reasons explaining variances),
and display[ing] certain results ( outputs integration of determined care steps
into protocol)" (Ans. 41; Final Act. 7). The Examiner determines the
claim's abstract idea is similar to data gathering and manipulation
techniques previously identified by the courts ( Ans. 41 ( citing Electric
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016)); Final Act.
7 (citing SmartGene, Inc. v. Advanced Biological Labs., SA, 852 F.Supp.2d
42 (D.D.C. 2012), aff'd 555 F. App'x 950 (Fed. Cir. 2014))). The Examiner
6
Appeal2017-010610
Application 13/996, 17 5
also determines claim 1 is directed to mitigating risk in healthcare settings,
which is a fundamental business practice analogous to abstract ideas in
Alice, Bilski, and PerkinElmer (Ans. 41 (citing Alice, 134 S. Ct. at 2347;
Bilski v. Kappas, 561 U.S. 593 (2010); PerkinElmer Inc. v. Intema Ltd., 496
Fed.Appx. 65 (Fed. Cir. 2012))).
We agree with the Examiner claim 1 is abstract because it is directed
to collecting and analyzing workflow data, identifying sequences in the data,
and displaying identified data-an abstract idea similar to data collection
and manipulation techniques previously identified by the courts in Electric
Power Group, Content Extraction, and the Intellectual Ventures cases (Ans.
41, 45; see Electric Power Grp., 830 F.3d at 1353-54 (holding that the
claims were directed to an abstract idea because "[t]he advance they purport
to make is a process of gathering and analyzing information of a specified
content, then displaying the results, and not any particular assertedly
inventive technology for performing those functions."); Content Extraction
& Transmission LLC v. Wells Fargo Bank, Nat'! Ass 'n, 776 F.3d 1343,
1347--48 (Fed. Cir. 2014) (finding "[t]he concept of data collection,
recognition, and storage is undisputedly well-known," and "humans have
always performed these functions"); Intellectual Ventures I LLC v. Capital
One Bank (USA), 792 F.3d 1363, 1367, 1370 (Fed. Cir. 2015)
( administration of financial accounts using advanced internet interface
providing user display access to customized webpages is an abstract idea);
and Intellectual Ventures I LLC v. Erie Indemnity Co., 850 F.3d 1315, 1328
(Fed. Cir. 2017) (claims directed to creating an index of descriptive tags and
metadata and using the index to search for and retrieve data is an abstract
idea)).
7
Appeal2017-010610
Application 13/996, 17 5
We are unpersuaded by Appellants' arguments claim 1 is not abstract
because the claim is "specifically tied" to an IT infrastructure of a medical
institution and improves the IT infrastructure's ability to learn and optimize
clinical protocols for different subpopulations of patients (Reply Br. 13, 16;
App. Br. 22-23, 26). The method of claim 1 does not recite nor require
improving or optimizing an IT infrastructure because the method is merely
"for use in conjunction with" an IT infrastructure (Ans. 45--46). The claim
also does not recite a specific improvement in the technical functioning of an
IT infrastructure. Claim 1 merely requires collecting workflow data and
grouping workflow sequences to identify a sequence ("identifying one or
more sequences") that is most commonly used. The claimed workflow
collection and identification of a most common sequence are peiformable by
a human being (see Spec. 10:3 and 22-24, 12:18-23). 3 Thus, claim 1
merely recites workflow processing steps capable of being performed by pen
and paper, in conjunction with insignificant data input and output operations.
See Electric Power Grp., 830 F.3d at 1353-54 (collecting information and
"analyzing information by steps people go through in their minds, or by
mathematical algorithms, without more, [are] ... essentially mental
processes within the abstract-idea category"); and Dealertrack, Inc. v.
Huber, 674 F.3d 1315, 1333-34 (Fed. Cir. 2012) ("Simply adding a
3 The Specification provides "in certain embodiments, the workflow data is
collected manually from clinicians, for example, in a written form," and "a
physician provides the data analysis engine 17 6 with user input to facilitate
the identification of the most common sequences of care steps" (see Spec.
10:3 and 22-24 (emphasis omitted)). Additionally, optimal sequences of
care steps may be "manually selected by, for example, clinical specialists of
the medical institution" (see Spec. 12: 18-23).
8
Appeal2017-010610
Application 13/996, 17 5
'computer aided' limitation to a claim covering an abstract concept, without
more, is insufficient to render [a] claim patent eligible.") (internal citation
omitted). Appellants' arguments with respect to claim 25 are similarly non-
commensurate with the claim, which does not require "determining which
information to move between what medical database" (see Reply Br. 18).
We additionally note, Appellants' reliance on Amdocs to determine
whether the claims are directed to an abstract idea under Alice step 1 is
misplaced (see App. Br. 21-22). In Amdocs, the precise nature of the claims
was unknown and not straightforward. Thus, in Amdocs, the Federal Circuit
opted to bypass Alice step 1 in favor of Alice step 2. Nevertheless,
Appellants' claims and Specification do not describe technological
improvements similar to Amdocs or McRO (Ans. 45--48). Particularly, the
court determined that McRO's claim was not directed to an abstract idea
because it "uses the limited rules in a process specifically designed to
achieve an improved technological result" over "existing, manual 3-D
animation techniques." See McRO, 837 F.3d at 1299, 1316. McRO's
improved technological result is "allowing computers to produce 'accurate
and realistic lip synchronization and facial expressions in animated
characters' that previously could only be produced by human animators."
See McRO, 837 F.3d at 1313 (internal citation omitted). In contrast,
Appellants' claim 1 performs generic data collection and manipulation
(grouping sequences and identifying a most common sequence, performable
by a human being) (see Spec. 10:3 and 22-24, 12: 18-23). See Bancorp
Services, L.L.C. v. Sun Life Assurance Co. of Canada (US.), 687 F.3d 1266,
1278 (Fed. Cir. 2012) ("the fact that the required calculations could be
performed more efficiently via a computer does not materially alter the
9
Appeal2017-010610
Application 13/996, 17 5
patent eligibility of the claimed subject matter.").
The claims in Amdocs concerned network components "arrayed in a
distributed architecture" that "collect[ ed] and process[ ed] data close to its
source," and thereby "enable[ d] load distribution" and reduced network
congestion. See Amdocs, 841 F.3d at 1291-92, 1300, 1303, 1306. As such,
Amdocs ' claims "entail[] an unconventional ... solution ( enhancing data in a
distributed fashion) to a technological problem (massive record flows which
previously required massive databases)" and "improve the performance of
the system itself' (id. at 1300; see also Ans. 45). In contrast to Amdocs,
claim 1 discusses a method for use in conjunction with an IT infrastructure
to integrate a sequence of steps into an established clinical protocol, which
does not achieve an improvement in computer functionality (Ans. 45--47).
Appellants do not describe an advance in hardware or software that, for
example, causes a computer itself or a database itself to operate faster or
more efficiently. Appellants do not address the operation of a computer
itself or a database itself. Appellants also have not demonstrated their
claims provide a "solution ... necessarily rooted in computer technology in
order to overcome a problem specifically arising in the realm of computer
networks," as explained by the Federal Circuit in DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014); or "a specific
improvement to the way computers operate," as explained in Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
We are also not persuaded by Appellants' argument the claims are not
abstract because they "solve problems in a specific technical area using
specific technical components" (Reply Br. 16). Appellants' claims focus on
the problem of improving medical protocols and clinical decision making-a
10
Appeal2017-010610
Application 13/996, 17 5
problem that is not a technical problem or one rooted in computer
technology or particular only to the Internet (see Spec. 1 :2---6, 2:9--11; Ans.
52; DDR Holdings, 773 F.3d at 1257).
Accordingly, we agree with the Examiner claims 1, 11, and 25 are
directed to an abstract idea.
We now tum to the second step of the Alice framework. Particularly,
Appellants allege the claims recite significantly more than an abstract idea
because: (i) the claims describe a technology-based solution similar to
BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d
1341 (Fed. Cir. 2016) (App. Br. 27; Reply Br. 16, 19), and (ii) similar to
DDR, the claims provide a technological solution rooted in computer
networking technology to "make it possible for an IT infrastructure to learn
... clinical procedures and protocols" (Reply Br. 18; App. Br. 28-29).
Appellants' arguments are not persuasive. Appellants' claims and
Specification do not identify a specific improvement to computer technology
or computer operation effected by the claims (Ans. 50-51 ). For example,
Appellants' Specification does not describe how the claimed grouping of
sequences and identification of most common sequences would improve
computer technology or the computer's operation (Ans. 50-51, 53-54). In
contrast, BASCOM's patent-eligible ordered combination of claim
limitations contain an "inventive concept [that] harnesses [a] ... technical
feature of network technology in a filtering system by associating individual
accounts with their own filtering scheme and elements while locating the
filtering system on an ISP [(Internet Service Provider)] server" (see
BASCOM, 827 F.3d at 1350). BASCOM's claimed ordered combination
"improve[ s] the performance of the computer system itself' with a
11
Appeal2017-010610
Application 13/996, 17 5
"technology-based solution ... to filter content on the Internet that
overcomes existing problems with other Internet filtering systems" (see
BASCOM, 827 F.3d at 1351-52 (internal citation omitted)).
As discussed supra, we are also not persuaded Appellants' claims
provide a technological solution rooted in computer networking technology.
Appellants have not provided evidence that the claims achieve an
improvement in communication networks. Further, Appellants'
Specification and claims describe generic computing elements (processors,
data collecting engine, data analysis engine, and display device) performing
generic computing functions (Ans. 42, 45, 51; see Spec. 4:23-5:10,
14:16-15:2, 16:3-20). "[T]he use of generic computer elements like a
microprocessor or user interface" to perform conventional computer
functions "do not alone transform an otherwise abstract idea into
patent-eligible subject matter" (FairWarning IP, LLC v. Iatric Sys., Inc., 839
F.3d 1089, 1096 (Fed. Cir. 2016) (citing DDR Holdings, 773 F.3d at 1256)).
We are also unpersuaded by Appellants' argument their claims are patent
eligible because the claims are similar to certain examples in the Interim
Guidance (App. Br. 25-26, 28-29; Reply Br. 15, 18). We note the examples
set forth in the Interim Guidance are just that, examples, and Appellants'
claims are directed to collecting and manipulating data-an abstract idea.
With respect to Appellants' preemption argument (App. Br. 30; Reply
Br. 19), we note the McRO court explicitly "recognized that 'the absence of
complete preemption does not demonstrate patent eligibility"' (see McRO,
837 F.3d at 1315 (quotingAriosa Diagnostics, Inc. v. Sequenom, Inc., 788
F.3d 1371, 1379 (Fed. Cir. 2015))). "Where a patent's claims are deemed
only to disclose patent ineligible subject matter" under the Alice/Mayo
12
Appeal2017-010610
Application 13/996, 17 5
framework, "preemption concerns are fully addressed and made moot"
(Ariosa, 788 F.3d at 1379).
Because we agree with the Examiner's analysis and find Appellants'
arguments insufficient to show error, we sustain the Examiner's § 101
rejection of independent claims 1, 11, and 25, and dependent claims 3-10,
12, 13, 16, 21-24, 26, and 27, for which no separate arguments are provided.
Appellants submit separate arguments with respect to dependent
claims 28, 29, and 30, arguing (i) claim 28 is "rooted in computer
technology" because it employs a graph traversal algorithm that
"advantageously allows for further addition of rules to limit the search
space" (App. Br. 23), (ii) claim 29 "improves technical functioning of the
system because limiting the amount of time reduces the burden on
processors and memory of the system" (App. Br. 23), and (iii) claim 30
"improves technical functioning of the system because limiting the search
space reduces the burden on processors and memory of the system" (App.
Br. 23; Reply Br. 13-14, 17).
Appellants' arguments are not persuasive because claims 28, 29, and
30 do not recite any detail for how a processor or memory traverses a graph
or is improved (Ans. 46). These claims do not require a processor
performing graph traversal, as opposed to pen and paper, for example. See
Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1342
(Fed. Cir. 2017) (explaining 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"); SiRF Tech., Inc. v. Int 'l Trade
Comm 'n, 601 F.3d 1319, 1333 (Fed. Cir. 2010) ("In order for the addition of
a machine to impose a meaningful limit on the scope of a claim, it must play
13
Appeal2017-010610
Application 13/996, 17 5
a significant part in permitting the claimed method to be performed, 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.").
Appellants' additional argument that claims 28-30 present a novel
way of improving medical system technology (see App. Br. 27) improperly
conflates the test for § 101 with the separate tests for § § 102 and 103. See,
e.g., Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir.
2016) ("under the Mayo/Alice framework, a claim directed to a newly
discovered law of nature (or natural phenomenon or abstract idea) cannot
rely on the novelty of that discovery for the inventive concept necessary for
patent eligibility"). As Appellants' arguments have not persuaded us of
error in the Examiner's rejection, we sustain the Examiner's§ 101 rejection
of claims 28-30.
Rejections of claims 1, 3, 4, 9-13, 16, 21, and 23 under 35 US.C. § 103(a)
With respect to claim 1, Appellants contend Arning merely compares
the cost of two sequences of steps, which does not teach or suggest a
clinically valid reason and "grouping sequences of same care steps based on
clinically valid reasons explaining variances in the sequences of the same
care steps" (App. Br. 11; Reply Br. 2). Appellants also argue Bocionek and
Arning do not teach or suggest determining a most common sequence of
same care steps for each group, as recited in claim 1 (App. Br. 10).
Appellants further argue Inokuchi "simply extract[ s] a medical treatment
behavior pattern as a rule ... [which] in no way suggests using clinically
14
Appeal2017-010610
Application 13/996, 17 5
valid reasons to explain variances in care steps ( as in claim 1 )" (Reply Br. 3
( citing Inokuchi Fig. 6) ). We do not agree.
We agree with and adopt the Examiner's findings as our own.
Particularly, we agree with the Examiner that Arning groups sequences of
steps based on cost, which suggests grouping step sequences based on
reasons explaining variances in the sequences of same care steps as recited
in claim 1 (Ans. 29). Particularly, Arning's execution sequence 1 (sequence
114 of steps A7B7C7D) and execution sequence 2 (sequence 116 of
steps A 7C7 B7 D) are groups determined based on a reason (cost)
explaining variances in the sequences (Final Act. 14 ( citing Arning ,r 52,
Fig. 1 ); Ans. 29). That is, a lower cost of failure is a reason for executing
step C (step most likely to fail) before step B (most expensive step) as in
sequence 116, rather than step B before step C (see Arning ,r,r 52-53).
Appellants argue Arning' s cost is not a clinically valid reason as in
Appellants' "application [that] relates to clinical decision making in hospital
settings" (App. Br. 11). Appellants' Specification, however, does not
provide an explicit and exclusive definition of the claimed term "clinically
valid reason," rather, the Specification merely provides discussion of
non-limiting examples of the term. 4 Thus, Arning' s cost of failure is
commensurate with the broad description of "clinically valid reason" in
Appellants' Specification, especially since "[c]osts are well known to be a
primary consideration in providing healthcare to patients" (Ans. 29 ( citing
4 Appellants' Specification broadly describes "grouping is performed for
clinically valid reasons explaining variances in the sequences of care steps,
such as particular attributes of the patients associated with the sequences of
care steps, time of day, and the like" (see Spec. 11: 11-13 ( emphases
added)).
15
Appeal2017-010610
Application 13/996, 17 5
Spec. 1:9-10, 19-21, and 24--27)). We agree with the Examiner Arning's
cost-based sequencing would have logically commended itself to the
problem of reducing cost of care in hospital settings (Ans. 29; Final Act. 15).
Arning also teaches the claimed determining a most common sequence of
same steps for each group----for example, Arning' s sequence 116
(A 7C7 B7 D) is the most common sequence in the group of execution
sequence 2 (see Arning ,r 52, Fig. 1; Final Act. 14).
Appellants' arguments regarding Inokuchi are presented for the first
time in the Reply Brief (see Reply Br. 3). The Reply Brief is not an
opportunity to present new arguments that could have been made in the
principal brief on appeal to rebut the Examiner's rejection. See Ex parte
Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative); see also 37
C.F.R § 41.41(b)(2) (2012). Moreover, we agree with the Examiner the
rows in Inokuchi's Figure 6 group sequences of same care steps (steps of a
medical examination followed by particular treatment steps) based on
clinically valid reasons (treatment outcomes revealing efficacy of particular
treatment sequences) explaining variances in the sequences of the same care
steps as recited in claim 1 (Final Act. 14--15 (citing Inokuchi Fig. 6)).
Inokuchi also teaches the claimed determining a most common sequence of
same care steps for each group----for example, "[ e Jach row of [Inokuchi' s]
Fig[ ure] 6[] discloses a grouping of sequences of care steps ( examination
followed by treatment) with a most common sequence of care steps for that
group" (Final Act. 14).
In light of the broad terms recited in claim 1 and the arguments
presented, Appellants have failed to clearly distinguish the claimed
invention over the prior art relied on by the Examiner. Thus, we sustain the
16
Appeal2017-010610
Application 13/996, 17 5
Examiner's obviousness rejection of independent claim 1, and independent
claim 11 argued for substantially the same reasons (App. Br. 12). We also
sustain the Examiner's obviousness rejections of dependent claims 3, 4, 9,
10, 12, 13, 16, 21, and 23, for which no separate arguments are presented.
Rejections of claims 5 and 24 under 35 USC§ 103(a)
Appellants contend Shen does not disclose "anything ... [that] would
correspond to the claimed workflow efficiency. . . [or] to the claimed
scheduling" (App. Br. 14). Appellants further argue Shen and the other cited
references do not teach or suggest ranking sequences of same care steps
against one another based on the claimed factors (App. Br. 14--15; Reply Br.
6-7).
The Examiner, however, finds Shen teaches it was known in the art to
evaluate performance of medical workflow sequences based on competing
interests including workflow efficiency and scheduling, as recited in claim 5
(Ans. 32-33 (citing Shen ,r,r 71-75, Fig. 3)). For example, Shen's
post-testing phase evaluates outcomes of medical imaging sequences based
on worliflow efficiency (see Shen ,r 8). Shen also suggests that performance
of medical imaging sequences is affected by scheduling considerations
seeking to "maximize the utilization of expensive medical equipment, such
as diagnostic imaging equipment, without unduly sacrificing the interests of
any single stakeholder" (Ans. 33 (citing Shen ,r 3)). Additionally, Inokuchi
identifies workflow sequences of same care steps as discussed supra, and
Tice, Inokuchi, and Bocionek teach it was known to rank workflow
sequences based on performance (Ans. 32-33 (citing Tice ,r 189); see also
Inokuchi ,r 63; Bocionek ,r,r 24, 26). Accordingly, we sustain the
17
Appeal2017-010610
Application 13/996, 17 5
Examiner's § 103(a) rejection of claim 5, as Appellants' arguments have not
persuaded us of error in the Examiner's rejection. We also sustain the
Examiner's rejection of claim 24, reciting features similar to claim 5, for
which Appellants provide the same arguments (App. Br. 18-19).
Rejections of claims 6, 22, and 25 under 35 USC§ 103(a)
With respect to independent claim 25, Appellants contend Arning
does not teach or suggest determining the most common sequence of care
steps in grouped sequences of care steps (App. Br. 13). However, as
discussed supra with respect to claim 1, we agree with the Examiner the
combination of Bocionek, Arning, and Inokuchi teaches and suggests
determining the most common sequences of care steps by grouping
sequences based on clinically valid reasons explaining variances in the
sequences (as recited in claim 25).
Appellants also argue Bocionek does not teach or suggest
"communicat[ing] workflow data between hospital departments" and
"workflow data ... received from a plurality of medical institutions and/or
national registries" as required by claim 25 (App. Br. 13; Reply Br. 5).
Claim 25, however, does not require communicating worliflow data between
hospital departments; rather, it merely recites processors "programmed to:
receive workflow data received from a plurality of medical institutions
and/or national registries for a plurality of patients."
The Examiner further explains, Bocionek's CCIS application accesses
patient records received from a "Hospital Information System (HIS) 20
patient record repository and other hospital departments," and generates
workflow ( task sequences) based on the patient records (see Bocionek ,r,r 16,
18
Appeal2017-010610
Application 13/996, 17 5
20 (emphasis omitted); Ans. 30-31). Bocionek's workflow (task sequences)
are generated by "searching patient records in multiple patient medication
and treatment databases for statistically significant data correlations and
patterns identifying treatment features leading to verifiable improvement"
(see Bocionek ,r 20). This suggests the received patient records in Bocionek
include information on care steps performed on the patients, e.g., "workflow
data" including "a plurality of care steps and relations there between for
each of the patients" recited in claim 25 (Ans. 30-31 ).
Accordingly, Appellants' arguments have not persuaded us of error in
the Examiner's rejection of claim 25. Therefore, we sustain the Examiner's
§ 103(a) rejection of claim 25. We also sustain the Examiner's rejection of
claims 6 and 22, reciting features similar to claim 25, for which Appellants
provide the same arguments (App. Br. 15, 17-18; Reply Br. 7).
Rejection of claim 7 under 35 US.C. § 103(a)
Appellants contend "Sadiq simply arranges its fragments based on
conflicts" and "does not fairly suggest adding one or more of the free
floating nodes to its optimal location and/or most common location within
the established clinical protocol" as recited in claim 7 (App. Br. 16; Reply
Br. 8). We do not agree.
We agree with the Examiner that Sadiq adds free floating nodes ( tasks
or processes, such as a mammogram or ultrasound) to a medical workflow
graph at a graph location considered optimal for a particular patient (Ans.
34--35 (citing Sadiq ,r 44, Figs. 2 and 4A)). Appellants' claimed "optimal
location" does not exclude Sadiq's task location based on medical
constraints that control sequencing of steps or combinations of medications
19
Appeal2017-010610
Application 13/996, 17 5
(see Sadiq ,r,r 49, 70). Accordingly, we sustain the Examiner's § 103(a)
rejection of claim 7.
Rejection of claim 8 under 35 USC§ 103(a)
With respect to dependent claim 8, the Examiner finds Grigsby's
paragraphs 4 and 11 and Figures 2 and 6 teach and suggest the steps for
updating clinical protocols as recited in claim 8 (Ans. 35-36; Final Act. 19).
Appellants argue Grigsby does not teach "comparing identified
sequences of the same care steps" (the steps previously determined as the
most common sequences in grouped workflow sequences); rather, Grigsby
merely updates a patient's treatment to achieve a planned treatment
objective (Reply Br. 9). Appellants argue Grigsby also does not identify
differences between an established clinical protocol and the sequences of
same care steps, and does not add a most frequent or valuable difference to
the clinical protocol, as required by claim 8 (Reply Br. 8; App. Br. 17). We
agree with Appellants.
The cited portions of Grigsby merely disclose changing a patient's
treatment when the initially planned treatment would not achieve a particular
objective by a scheduled time deadline (see Grigsby ,r,r 4, 11 and Abstract).
This does not teach claim 8's process for updating a clinical protocol by
identifying the most frequent or valuable differences between the protocol
and the most common treatment sequences used on patients. As the
Examiner has not identified sufficient evidence to support the rejection of
claim 8, we do not sustain the Examiner's§ 103(a) rejection of claim 8.
20
Appeal2017-010610
Application 13/996, 17 5
Rejection of claim 26 under 35 USC§ 103(a)
Appellants contend "Arning is entirely silent with respect to a
patient," "an attribute of a patient," and "using an attribute of a patient to
group sequences of steps together" as required by dependent claim 26 (App.
Br. 19). The Examiner, however, refers Appellants to "the answer to the
arguments concerning the rejections of claim 1," which include findings
regarding Inokuchi (Ans. 12-13, 30, 36). We agree with the Examiner that
the combination of Bocionek, Arning, and Inokuchi teaches the features of
claim 26. As discussed supra with respect to claim 1, Inokuchi groups
sequences based on clinically valid reasons such as treatment outcomes
revealing treatment efficacy on patients with particular medical conditions
(see Inokuchi Fig. 6).
Thus, Inokuchi's clinically valid reasons include attributes of those
patients, as required by claim 26 (Ans. 30, 36). Accordingly, we sustain the
Examiner's§ 103(a) rejection of claim 26.
Rejection of claim 27 under 35 USC§ 103(a)
The Examiner finds "Inokuchi discloses the recordation of the time of
day," thus, Inokuchi's "system that discloses variance and records the time
of day would meet the claimed element" of dependent claim 27 (Ans. 37
(citing Inokuchi ,r,r 12, 58, Fig. 6)).
Appellants argue although Inokuchi records dates and times of
treatment and examination, "Inokuchi does not suggest grouping sequences
of the same care steps of the workflow data based on clinically valid reasons
including the time of day explaining variances in the sequences of the same
21
Appeal2017-010610
Application 13/996, 17 5
care steps" as required by claim 27 in view of its base claim 1 (App. Br. 20).
We agree with Appellants.
The cited portions of Inokuchi do not disclose grouping
worliflows/sequences of care steps based on the time of day, as required by
claim 27 (App. Br. 20; Reply Br. 10-11). The Examiner also has not shown
the additional teachings of Bocionek and Arning make up for Inokuchi's
deficiency. As the Examiner has not identified sufficient evidence to
support the rejection of claim 27, we do not sustain the Examiner's§ 103(a)
rejection of claim 27.
Rejection of claims 28-30 under 35 USC§ 103(a)
Appellants contend Sadiq merely discusses using a constraint, which
"does not fairly suggest employing a graph traversal algorithm, much less
suggest employing a graph traversal algorithm to identify a best sequence of
care steps using an evaluation function" as recited in claim 28 (App. Br. 20).
We do not agree.
We agree with the Examiner Sadiq uses a graph traversal algorithm to
traverse a graph of nodes (representing medical tests or procedures, see Figs.
4A and 17) and identify a valid sequence of nodes (e.g., a sequence without
conflicts between nodes) using an evaluation function defined by order
constraints and fork constraints (Ans. 38 (citing Sadiq ,r,r 7, 107, 110, 113,
Figs. 11, 12, 17)). Appellants' arguments have not addressed these specific
findings by the Examiner. Accordingly, Appellants' arguments have not
persuaded us of error in the Examiner's rejection of claim 28, and we sustain
the Examiner's§ 103(a) rejection of dependent claim 28.
22
Appeal2017-010610
Application 13/996, 17 5
With respect to claim 29, Appellants argue Sadiq's restriction on how
many fragments may be included in a graph does not suggest a rule limiting
an amount of time that the graph traversal algorithm employs searching the
graph, as claim 29 requires (App. Br. 20-21). Appellants' arguments do not
address the Examiner's specific findings that Sadiq' s "maximum"
constraints "limit the number of fragments ... included in the creation of a
workflow template, which would limit the amount of time the algorithm
employs searching the graph" (Ans. 38 (citing Sadiq ,r 127); see also Sadiq
,r 28). We agree with the Examiner's reasonable findings. Therefore, we
sustain the Examiner's§ 103(a) rejection of independent claim 29.
With respect to claim 30, Appellants argue Sadiq's disclosure of forks
does not suggest limiting a search space of a graph traversal algorithm, as
recited in claim 30 (App. Br. 21). The Examiner finds, however, Sadiq's
order constraints limit a search space that a graph traversal algorithm
employs searching a graph (Ans. 38 (citing Sadiq ,r,r 107, 110, 113)). We
agree with the Examiner's findings. Sadiq's order constraint limits the order
of nodes/steps, which is commensurate with the broad description of
"limiting a [graph] search space" in Appellants' Specification (see Sadiq
,r,r 70, 100, 109). 5 Accordingly, Appellants' arguments have not persuaded
us of error in the Examiner's rejection of claim 30, and we sustain the
Examiner's§ 103(a) rejection of dependent claim 30.
5 Appellants' Specification describes a "graph traversal algorithm ...
employs rules to limit the search space. For example, a rule that prohibits
the graph traversal algorithm from exploring a path in which care step B
follows care step A" (see Spec. 12:4---6).
23
Appeal2017-010610
Application 13/996, 17 5
DECISION
The Examiner's decision rejecting claims 9 and 10 under
35 U.S.C. § 112, fourth paragraph is reversed.
The Examiner's decision rejecting claims 1, 3-13, 16, and 21-30
under 35 U.S.C. § 101 is affirmed.
The Examiner's decision rejecting claims 1, 3-7, 9-13, 16, 21-26,
and 28-30 under 35 U.S.C. § 103(a) is affirmed.
The Examiner's decision rejecting claims 8 and 27 under
35 U.S.C. § 103(a) is reversed.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, we affirm the Examiner's decision rejecting
claims 1, 3-13, 16, and 21-30. See 37 C.F.R. § 4I.50(a)(l).
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
24