Intermountain Intellectual Asset Management, LLC

Patent Trials and Appeals Board

Jan 20, 2022

2021005213 (P.T.A.B. Jan. 20, 2022)

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. 16/297,482 03/08/2019 David Balaban 136494-8004.US04 7341 25096 7590 01/20/2022 PERKINS COIE LLP - SEA General PATENT-SEA P.O. BOX 1247 SEATTLE, WA 98111-1247 EXAMINER LAMARDO, VIKER ALEJANDRO ART UNIT PAPER NUMBER 2126 NOTIFICATION DATE DELIVERY MODE 01/20/2022 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): patentprocurement@perkinscoie.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DAVID BALABAN, TODD W. KELLEY, JOHN SCOTT SKELLENGER, MARK DURST, MICHAEL TUPIKOV, NICOLAS SEAN FRISBY, and DOMINIC JOSEPH STEINITZ Appeal 2021-005213 Application 16/297,482 Technology Center 2100 Before MAHSHID D. SAADAT, ROBERT E. NAPPI, and BETH Z. SHAW, Administrative Patent Judges. SHAW, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claim 1, which is the only claim currently pending on appeal. Claims 2-29 have been cancelled. Appeal Br. 1. We have jurisdiction under 35 U.S.C. § 6(b). We conducted a video hearing on January 6, 2022. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Intermountain Intellectual Asset Management LLC. Appeal Br. 1. Appeal 2021-005213 Application 16/297,482 2 We AFFIRM. CLAIMED SUBJECT MATTER The claim is directed to a method performed by a computing system for use in informing treatment of a patient by determining a prediction of a characteristic of a state of an organ of a person from which the state of the organ can be inferred. Claim 1 is reproduced below: 1. A method performed by a computing system for use in informing treatment of a patient by determining a prediction of a characteristic of a state of an organ of a person from which the state of the organ can be inferred, the method comprising: accessing a prior probability density function (“PDF”) representing an initial measurement of the characteristic and parameters of an organ model that models activity of the organ; and performing iterations that include: receiving a measurement of the characteristic of the patient collected at a measurement time; generating an advected prior PDF by advecting a prior PDF to the measurement time by solving an advection equation based on the organ model and the prior PDF; and generating a posterior PDF using a learning technique to learn new values of the parameters of the organ model based on the advected prior PDF, the organ model, the measurement, and a measurement uncertainty, wherein the prior PDF for the next iteration is set to the posterior PDF; generating a prediction of the characteristic at a future time based on an advected posterior PDF generated by advecting the posterior PDF to the future time and based on the organ model; and outputting an indication of the prediction of the characteristic at the future time so that the state of the organ can be inferred from the prediction of the characteristic to inform treatment of the patient. Appeal 2021-005213 Application 16/297,482 3 REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Veldhuis US 2011/0046887 A1 Feb. 24, 2011 Hillis US 9141756 B1 Sept. 22, 2015 REJECTIONS Claim 1 is rejected under 35 U.S.C. § 101. Claim 1 is rejected under 35 U.S.C. § 112(b) as being indefinite. Claim 1 is rejected under 35 U.S.C. § 103 as being unpatentable over Veldhuis and Hillis. OPINION Section 101 Principles of Law “Whether a claim is drawn to patent-eligible subject matter is an issue of law that we review de novo.” SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319, 1331 (Fed. Cir. 2010). An invention is patent-eligible if it claims a “new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101. However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014). In determining whether a claim falls within an excluded category, we are guided by the Court’s two-part framework, described in Mayo and Alice. Id. at 217-18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., Appeal 2021-005213 Application 16/297,482 4 566 U.S. 66, 75-77 (2012)). In accordance with that framework, we first determine what concept the claim is “directed to.” See Alice, 573 U.S. at 219 (“On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept of hedging, or protecting against risk.”). Concepts determined to be abstract ideas, and thus patent ineligible, include certain methods of organizing human activity, such as fundamental economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594-95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191 (1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267-68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). If the claim is “directed to” an abstract idea, we turn to the second part of the Alice and Mayo framework, where “we must examine the elements of the claim to determine whether it contains an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-eligible application.” Alice, 573 U.S. at 221 (citation omitted). “A claim that recites an abstract idea must include ‘additional features’ to ensure ‘that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo, 566 U.S. at 77). “[M]erely Appeal 2021-005213 Application 16/297,482 5 requir[ing] generic computer implementation[] fail[s] to transform that abstract idea into a patent-eligible invention.” Id. In January 2019, the U.S. Patent and Trademark Office (“USPTO”) published revised guidance on the application of § 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019), now incorporated in the Manual of Patent Examination Procedure (9th Ed., Rev. 10.2019, June 2020) (“MPEP”) in sections 2103 through 2106.07(c) (“2019 Revised Guidance”).2 Under the 2019 Revised Guidance and the October 2019 Update, we first look to whether the claim recites: (1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, or mental processes) (“Step 2A, Prong One”); and (2) additional elements that integrate the judicial exception into a practical application (see MPEP § 2106.05(a)-(c), (e)-(h)) (“Step 2A, Prong Two”).3 2019 Revised Guidance, 84 Fed. Reg. at 52-55. 2 In response to received public comments, the Office issued further guidance on October 17, 2019, clarifying the 2019 Revised Guidance. USPTO, October 2019 Update: Subject Matter Eligibility (the “October 2019 Update”) (available at https://www.uspto.gov/sites/default/files/ documents/peg_oct_2019_update.pdf). 3 This evaluation is performed by (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception, and (b) evaluating those additional elements individually and in combination to determine whether the claim as a whole integrates the exception into a practical application. See 2019 Revised Guidance - Section III(A)(2), 84 Fed. Reg. at 54-55. Appeal 2021-005213 Application 16/297,482 6 Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look, under Step 2B, to whether the claim: (3) adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field (see MPEP § 2106.05(d)); or (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. 2019 Revised Guidance, 84 Fed. Reg. at 52-56; MPEP § 2106.04. Abstract idea Turning to Step 2A, Prong 1, the claimed invention is for generating recommendations for users of online systems. See Spec. ¶ 2. Claim 1 (with emphasis added) includes the following limitations: accessing a prior probability density function (“PDF”) representing an initial measurement of the characteristic and parameters of an organ model that models activity of the organ; and performing iterations that include: receiving a measurement of the characteristic of the patient collected at a measurement time; generating an advected prior PDF by advecting a prior PDF to the measurement time by solving an advection equation based on the organ model and the prior PDF; and generating a posterior PDF using a learning technique to learn new values of the parameters of the organ model based on the advected prior PDF, the organ model, the measurement, and a measurement uncertainty, wherein the prior PDF for the next iteration is set to the posterior PDF; generating a prediction of the characteristic at a future time based on an advected posterior PDF generated by advecting the posterior PDF to the future time and based on the organ model. Appeal 2021-005213 Application 16/297,482 7 Claim 1 recites an abstract idea grouping listed in the 2019 Eligibility Guidance: “mental processes.” See MPEP § 2106.04 (listing mental processes-concepts performed in the human mind (including an observation, evaluation, judgment, opinion) as one of the “enumerated groupings of abstract ideas”). “Mental processes” include acts that people can perform in their minds or using pen and paper, even if the claim recites that a generic computer component performs the acts. Id.; see also Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016) (“[W]ith the exception of generic computer-implemented steps, there is nothing in the claims themselves that foreclose them from being performed by a human, mentally or with pen and paper.”); Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d. 1314, 1324 (Fed. Cir. 2016) (holding that computer-implemented method for “anonymous loan shopping” was an abstract idea because it could be “performed by humans without a computer”). The method recited in claim 1 executes steps that people can practically perform in their minds or using pen and paper. For example, a person can perform the “accessing a prior probability density function (“PDF”) representing an initial measurement of the characteristic and parameters of an organ model that models activity of the organ” step of claim 1 by using his or her mind (or pen and paper) in the claimed manner. A person can perform the “receiving a measurement of the characteristic of the patient collected at a measurement time” step by using his or her mind (or pen and paper) in the claimed manner. A person can perform the “generating an advected prior PDF by advecting a prior PDF to the measurement time by solving an advection equation based on the organ Appeal 2021-005213 Application 16/297,482 8 model and the prior PDF” step, using his or her mind (or pen and paper). A person can perform the “generating a posterior PDF using a learning technique to learn new values of the parameters of the organ model based on the advected prior PDF, the organ model, the measurement, and a measurement uncertainty, wherein the prior PDF for the next iteration is set to the posterior PDF,” step, using his or her mind (or pen and paper). A person can perform the “generating a prediction of the characteristic at a future time based on an advected posterior PDF generated by advecting the posterior PDF to the future time and based on the organ model” step using his or her mind (or pen and paper). Accordingly, claim 1 recites a mental process, and thus an abstract idea. To the extent Appellant contends that the claimed invention is rooted in technology because it is ostensibly directed to a technical solution, we disagree. Even assuming, without deciding, that claimed invention can advect a PDF faster than doing so manually, any speed increase comes from the capabilities of the generic computer components-not the recited process itself. See FairWarning IP, LLC v. Iatric Systems, Inc., 839 F.3d 1089, 1095 (Fed. Cir. 2016) (citing Bancorp Services, LLC v. Sun Life Assurance Co., 687 F.3d 1266, 1278 (Fed. Cir. 2012) (“[T]he fact that the required calculations could be performed more efficiently via a computer does not materially alter the patent eligibility of the claimed subject matter.”)); see also Intellectual Ventures I LLC v. Erie Indemnity Co., 711 F. App’x 1012, 1017 (Fed. Cir. 2017) (unpublished) (“Though the claims purport to accelerate the process of finding errant files and to reduce error, we have held that speed and accuracy increases stemming from the ordinary capabilities of a general-purpose computer do not materially alter the patent Appeal 2021-005213 Application 16/297,482 9 eligibility of the claimed subject matter.”). Like the claims in FairWarning, the focus of claim 1 is not on an improvement in computer processors as tools, but on certain independently abstract ideas that use generic computing components as tools. See FairWarning, 839 F.3d at 1095 (citations and quotation marks omitted). Turning to Step 2A, Prong 2, the remaining elements recited in claim 1 do not integrate the abstract idea into a practical application. In addition to the steps discussed above, claim 1 recites “outputting an indication of the prediction of the characteristic at the future time.” This outputting function is insignificant extra-solution activity that merely outputs data and, therefore, does not integrate the exception into a practical application. See M.P.E.P. § 2106.05(g); Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715- 16 (Fed. Cir. 2014). Thus, we conclude that the claims do not integrate the judicial exception into a practical application. The claims do not (1) improve the functioning of a computer or other technology, (2) are not applied with any particular machine (except for a generic computer), (3) do not effect a transformation of a particular article to a different state, and (4) are not applied in any meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception. See MPEP §§ 2106.05(a)-(c), (e)-(h). We, therefore, agree with the Examiner that claim 1 is directed to an abstract idea. Inventive Concept Because we determine claim 1 is “directed to” an abstract idea, we consider whether claim 1 recites an “inventive concept.” The Examiner Appeal 2021-005213 Application 16/297,482 10 determined claim 1 does not recite an inventive concept. We agree with the Examiner’s determination. As noted above, the claimed invention merely uses generic computing components to implement the recited abstract idea. The additional element recited in the claim is outputting an indication of the prediction. The claim recites this outputting at a high level of generality. This outputting does not amount to “significantly more” than the abstract idea. Appellant’s arguments do not persuade us claim 1 is “directed to” a patent-eligible concept. Accordingly, we sustain the § 101 rejection of claim 1. Indefiniteness As a preliminary matter, we note that “‘the main purpose of the examination, to which every application is subjected, is to try to make sure that what each claim defines is patentable. . . . [T]he name of the game is the claim. . . .’” In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998) (quoting Giles S. Rich, The Extent of the Protection and Interpretation of Claims-American Perspectives, 21 Int’l Rev. Indus. Prop. & Copyright L. 497, 499 (1990)) (emphasis omitted). More specifically, “if a claim is amenable to two or more plausible claim constructions, the USPTO is justified in requiring the applicant to more precisely define the metes and bounds of the claimed invention by holding the claim unpatentable under 35 U.S.C. § 112, second paragraph, as indefinite.” Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential). The Examiner finds that the term “advecting” is unclear. Ans. 3, 4. The Examiner interprets the limitation of “advecting a prior PDF to the measurement time” to mean “solving an advection equation based on the Appeal 2021-005213 Application 16/297,482 11 organ model and the prior PDF.” Id. Yet, the Examiner does not explain on this record how the claim is amenable to two or more plausible claim constructions. We agree with Appellant that the claims are not indefinite because paragraphs 21 and 23 explain that “advecting a prior PDF” means “solving an advection equation based on the organ model and the prior PDF.” Appeal Br. 10. Accordingly, we do not sustain the rejection of claim 1 under 35 U.S.C. § 112 as being indefinite. Obviousness The Examiner finds that Veldhuis teaches “generating an advected prior PDF by advecting a prior PDF to the measurement time.” We are persuaded by Appellant’s arguments, however (see Appeal Br. 7, 8; Reply Br. 3-5), that on this record, the Examiner has not sufficiently explained how the cited portions of Vedlhuis teaches advecting a prior PDF, i.e., solving an advection equation based on the organ model and the prior PDF. Accordingly, on this record, we do not sustain the rejection of claim 1 under 35 U.S.C. § 103. CONCLUSION We reverse the rejection of claim 1 under 35 U.S.C. § 112(b). We reverse the rejection of claim 1 under 35 U.S.C. § 103. We affirm the rejection of claim 1 under 35 U.S.C. § 101. Because we affirm at least one ground of rejection with respect to each claim on appeal, the Examiner’s decision rejecting claim 1 affirmed. See 37 C.F.R. § 41.50(a)(1). Appeal 2021-005213 Application 16/297,482 12 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1 112(b) Indefiniteness 1 1 101 Eligibility 1 1 103 Veldhuis, Hillis 1 Overall Outcome 1 TIME PERIOD FOR RESPONSE 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)(1)(iv). AFFIRMED