Joel C. Dubbels et al.Download PDFPatent Trials and Appeals BoardSep 3, 201913181245 - (D) (P.T.A.B. Sep. 3, 2019) 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. 13/181,245 07/12/2011 Joel C. DUBBELS ROC920100353US1 3985 103751 7590 09/03/2019 IBM CORP - Rochester Drafting Center 11501 Burnet Road Austin, TX 78758 EXAMINER DURANT, JONATHAN W ART UNIT PAPER NUMBER 3626 NOTIFICATION DATE DELIVERY MODE 09/03/2019 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): rocdrctr@us.ibm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JOEL C. DUBBELS and RICHARD J. STEVENS ____________ Appeal 2018-000202 Application 13/181,2451 Technology Center 3600 ____________ Before JOSEPH A. FISCHETTI, MICHAEL C. ASTORINO, and PHILIP J. HOFFMANN, Administrative Patent Judges. FISCHETTI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s final rejection of claims 22–42. We have jurisdiction under 35 U.S.C. § 6(b). SUMMARY OF DECISION We AFFIRM. 1 Appellants identify International Business Machines Corporation as the real party in interest. Appeal 2018-000202 Application 13/181,245 2 THE INVENTION Appellants state, “[t]he field of the invention is data processing, or, more specifically, methods, apparatus, and products for administering medical digital images in a distributed medical digital image computing environment.” (Spec. 1: 9–11). Claim 22, reproduced below, is representative of the subject matter on appeal. 22. A system for medical imaging data management in a medical cloud computing environment, the system comprising: a memory having a set of computer readable computer instructions, and a computer hardware processor for executing the set of computer readable instructions, the set of computer readable instructions including: creating, with respect to a request to process medical imaging data in the medical cloud computing environment and utilizing a computer hardware processor, using a medical digital image communications protocol adapter included in a subnetwork of the medical cloud computing environment for security with respect to the medical imaging data, an original data structure having the medical imaging data; executing, utilizing the computer hardware processor, a medical imaging data operation on the medical imaging data; capturing, utilizing the computer hardware processor when executing the medical imaging data operation on the medical imaging data, an interim data structure having interim medical imaging data including both a first portion and a second portion; identifying, using an error table, a cause of an execution failure with respect to the medical imaging data operation on the medical imaging data, wherein the execution failure includes the second portion but not the first portion; selecting, by a medical digital image transaction cluster included in a primary integrated delivery network of the Appeal 2018-000202 Application 13/181,245 3 medical cloud computing environment, a repaired operation to correct the execution failure using the cause of the execution failure; and executing, by the primary integrated delivery network of the medical cloud computing environment, the repaired operation with respect to the second portion but not the first portion. THE REJECTION The Examiner relies upon the following as evidence of unpatentability: Berstis US 5,909,215 June 1, 1999 Wong US 6,260,021 B1 July 10, 2001 Sebastian US 2002/0099838 A1 July 25, 2002 Rudd US 2002/0120693 A1 Aug. 29, 2002 Jeong US 2005/0281212 A1 Dec. 22, 2005 Trofimov US 2008/0085042 A1 Apr. 10, 2008 Mahesh US 2008/0118119 A1 May 22, 2008 Hernandez US 2008/0140454 A1 June 12, 2008 Jandhyala US 2009/0271324 A1 Oct. 29, 2009 Olson US 2009/0307522 A1 Dec. 10, 2009 Vesper US 2011/0153351 A1 June 23, 2011 DICOM PS 3.5-2004 (Digital Imaging and Communications in Medicine (DICOM), Part 5: Data Structures and Encoding, PS 3.5-2004, National Electrical Manufacturers Association, 2004, http://dicom.nema.org/dicom/2004/04_05pu.pdf, Accessed Aug. 8, 2016) (hereinafter “DICOM”). Appeal 2018-000202 Application 13/181,245 4 The following rejections are before us for review. Claims 22–42 are rejected under 35 U.S.C. § 101 as being as patent ineligible. Claims 22–42 are provisionally rejected on the ground of non– statutory double patenting over claims 35–53 of copending Application No. 13/690,741.2 Claims 31, 35, and 37–39 are rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Claims 22, 23, 32, 33, 35, 38, and 40–42 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Hernandez in view of Berstis. Claim 24 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Hernandez in view of Berstis and in further view of Sebastian and Jeong. Claims 25 and 26 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Hernandez in view of Berstis and in further view of Olson. Claim 27 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Hernandez in view of Berstis and in further view of Sebastian, Jeong, and Vesper. Claims 28 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Hernandez in view of Berstis and in further view of Wong. 2 We decline to reach the double patenting rejections because panels have the flexibility to reach or not reach provisional obviousness-type double patenting rejections. See Ex parte Moncla, 95 USPQ2d 1884 (BPAI 2010) (precedential). Appeal 2018-000202 Application 13/181,245 5 Claims 29 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Hernandez in view of Berstis and in further view of Wong and Rudd. Claim 30 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Hernandez in view of Berstis and in further view of Rudd. Claim 31 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Hernandez in view of Berstis and in further view of Rudd and Jandhyala. Claim 34 is rejected under 35 U.S.C. § 103(a) as being unpatentable over 35 U.S.C. 103(a) as being unpatentable over Hernandez in view of Berstis and in further view of Trofimov. Claim 36 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Hernandez in view of Berstis and in further view of DICOM. Claim 37 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Hernandez in view of Berstis and in further view of DICOM and Mahesh. Claim 39 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Hernandez in view of Berstis and in further view of Vesper and Jeong. Appeal 2018-000202 Application 13/181,245 6 FINDINGS OF FACT We adopt the Examiner’s findings as set forth on pages 7–10 in the Final Office Action3 and on pages 13–21 in the Examiner’s Answer, concerning only the 35 U.S.C. § 101 rejection. ANALYSIS 35 U.S.C. § 112, FIRST PARAGRAPH, REJECTION The Examiner rejected claims 31, 35, and 37–39 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. (Final Act. 4–7). Claim 31 The Examiner rejects the limitation “metering, in response to selecting the repaired operation, execution of the repaired operation; and generating, in response to metering execution” because the specification does not describe what algorithm is used or provide any description of the algorithm (e.g., the necessary steps and/or flowcharts) that perform the claimed function in sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor invented the claimed subject matter (See MPEP 2161.01 ). (Final Act. 5, Answer 20). In response, Appellants at best only point to the Examiner’s language in the Final Office Action (Appeal Br. 33) to attempt to show how the Specification conveys with reasonable clarity to those skilled in the art that, as of the filing date sought, applicant was in possession of the invention as 3 All references to the Final Office Action refer to the Final Office Action mailed on August 18, 2016. Appeal 2018-000202 Application 13/181,245 7 now claimed. But, an applicant shows possession of the claimed invention by describing the claimed invention with all of its limitations using such descriptive means as words, structures, figures, diagrams, and formulas that fully set forth the claimed invention. Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572, (Fed. Cir. 1997). That has not been done here by Appellants. Claim 35 The Examiner rejects this claim because The specification describes re-executing failed business request objects including correcting and re-executing the transaction without reporting the error ([0112], of the PG Pub), but does not describe all of the asserted functions as performed without user intervention, as claimed. The specification additionally describes that the cloud model often includes provisioning computing capabilities without requiring human interaction with the cloud service provider ([0018], of the PG Pub), but does not describe the asserted functions as performed without user intervention, as claimed. (Final Act. 5–6, Answer 21). Appellants only generally argue, “while the specification may not explicitly teach, for example, ‘wherein the creating ... occur[s] in an automated fashion,’ Applicant contends that a person of skill in the art would recognize support for the automation of the processes listed in claim 35 throughout the specification as a whole.” (Appeal Br. 33). Concerning the rejection of claim 35 here, we find Appellants’ argument substantively insufficient to persuade us that the Specification conveys with reasonable clarity to those skilled in the art that, as of the filing date sought, applicant was in possession of the invention as now claimed. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64. (Fed. Cir. 1991). Claim 37 Appeal 2018-000202 Application 13/181,245 8 The Examiner maintains that “[t]he specification describes as medical business data object as including a patient ID and a physician ID ([0073] of the PG Pub), but the specification does not describe any verification of correspondence used before transmitting the first subset of medical imaging data sequence, as claimed.” (Final Act. 6). Appellants cite to page 43 of the Specification concluding “[a]s such, Examiner’s rejection to claim structure which specifies an order of operations is misplaced.” (Appeal Br. 34). The Examiner responds stating: The specification describes as medical business data object as including a patient ID and a physician ID (page 22, lines 7-13), but the specification does not describe any verification of correspondence used before transmitting the first subset of medical imaging data sequence, as claimed. It is not an issue of the order of elements, as the specification simply does not describe any verification of the claimed elements. (Answer 21). We agree with the Examiner because our review of page 43 of the Specification reveals only general concluding statements which do not answer the Examiner’s specified claim language, e.g., “architecture, functionality, and operation of possible implementations of systems, methods and computer program products according to various embodiments of the present invention.” For the reasons given in the Answer, we affirm the Examiner’s rejection of claim 37. Claims 38 and 39 The Examiner maintains that these claims describe: ‘an intermediate processing cluster separate from the primary integrated delivery network’ but the specification does not describe the ‘intermediate processing cluster’ as Appeal 2018-000202 Application 13/181,245 9 separate from the ‘primary integrated delivery network.’ Instead, the specification shows the ‘medical digital image transaction cluster’ as part of the ‘primary integrated delivery network.’ (See Fig 1, 120, 150). The specification describes no other transaction cluster other than the "medical digital image transaction cluster" shown to be a part of the "primary integrated delivery network." (Final Act. 6, 7). Appellants argue the Specification on pages 11 and 26 “conveys with reasonable clarity to those skilled in the art that, as of the filing date sought, Applicant was in possession of the invention as now claimed” (e.g., a variety of separate locations for elements of the claim structure were considered). We agree with Appellants that the Specification describing “[o]ften the destination of the image is a different location, logical or physical, from the provider of the original medical image prior to its being processed by the medical digital image transaction cluster,” would encompass the different location of “the identifying [being] performed within an intermediate processing cluster separate from the primary integrated delivery network.” In summary, we affirm the rejections of claims 31, 35, and 37, and reverse the rejections of claims 38 and 39 under 35 U.S.C. § 112, first paragraph. U.S.C. § 101 REJECTION We will affirm the rejection of claims 22–42 under 35 U.S.C. § 101. We select independent claim 22 as the representative claim for this group and so the remaining claims stand or fall with claim 22. See 37 C.F.R. § 41.37(c)(1)(iv) (2015). Appeal 2018-000202 Application 13/181,245 10 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 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 Supreme Court’s two-step framework, described in Mayo and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework, we first determine what concept the claim is “directed to.” See id. 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. Appeal 2018-000202 Application 13/181,245 11 252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). In Diehr, the claim at issue recited a mathematical formula, but the Supreme Court held that “[a] claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula.” Diehr, 450 U.S. at 176; see also id. at 191 (“We view respondents’ claims as nothing more than a process for molding rubber products and not as an attempt to patent a mathematical formula.”). Having said that, the Supreme Court also indicated that a claim “seeking patent protection for that formula in the abstract . . . . is not accorded the protection of our patent laws, . . . and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment.” Id. (citing Benson and Flook); see, e.g., Diehr, 450 U.S. at 187 (“It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.”). If the claim is “directed to” an abstract idea, we turn to the second step 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 (quotation marks 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 requir[ing] generic computer implementation[] fail[s] to transform that abstract idea into a patent-eligible invention.” Id. Appeal 2018-000202 Application 13/181,245 12 The PTO recently published revised guidance on the application of § 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the Guidance, 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); and (2) additional elements that integrate the judicial exception into a practical application (see Manual of Patent Examining Procedure (“MPEP”) § 2106.05(a)–(c), (e)–(h)). Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look 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. See Guidance. The U.S. Court of Appeals for the Federal Circuit has explained that “the ‘directed to’ inquiry applies a stage-one filter to claims, considered in light of the [S]pecification, based on whether ‘their character as a whole is directed to excluded subject matter.’” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). It asks whether the focus of the claims is on a specific improvement in relevant technology or on a process that itself qualifies as an “abstract idea” for which computers are invoked merely as a tool. See id. at 1335–36. In so doing, as indicated above, we apply a “directed to” two prong Appeal 2018-000202 Application 13/181,245 13 test: 1) evaluate whether the claim recites a judicial exception, and 2) if the claim recites a judicial exception, evaluate whether the claim “appl[ies], rel[ies] on, or use[s] the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.” Guidance 84 Fed. Reg. at 53; see also MPEP § 2106.05(a)–(c), (e)–(h). The Specification states: selecting (410), in dependence upon workflow selection rules and the attributes of the medical image business object, one or more medical analytic workflows to process the medical image. Workflow selection rules are rules that are tailored to carrying out the image processing transaction on the medical images and the medical image business object according to the request received by the health care provider. Such workflow selection rules identify the necessary requirements of the transaction and select workflows having services that carry out those requirements as well as select workflows that are tailored for the attributes of those images such as the slice size, number of slices, type of scanner used to create the images, standards used for the images and many others as will occur to those of skill in the art. (Specification 25: 16–26.) The preamble says the claimed system is “for medical imaging data management.” Claim 22. Understood in light of the Specification, claim 22, recites, in pertinent part: creating, with respect to a request to process medical imaging data…; executing, utilizing the computer hardware processor, a medical imaging data operation on the medical imaging data; capturing, … an interim data structure having interim medical imaging data including both a first portion and a second portion; identifying, using an error table, a cause of an execution failure with respect to the medical imaging data operation on the Appeal 2018-000202 Application 13/181,245 14 medical imaging data, wherein the execution failure includes the second portion but not the first portion; selecting, … a repaired operation to correct the execution failure using the cause of the execution failure; and executing, …the repaired operation with respect to the second portion but not the first portion. Claim 22. Accordingly, the Examiner found that the claims are directed to: comparing new (e.g., identified failure information) and stored information (e.g., possible repairing operations, workflow selection rule information, error table) and using rules to identify options (e.g., selecting a repairing operation, workflow selection rules, using error table) and are thus an abstract idea consistent with the types of ideas found to be abstract by the courts (Smartgene). These steps amount to using categories (e.g., original data structure, interim data structure, first portion, second portion, possible repairing operations, workflow selection rules, description of information stored in a data structure, error table) to organize (e.g., creating data structures, error table), store (e.g., storing, capturing, maintaining, error table), and transmit (e.g., sending, executing) information (e.g., medical imaging data) and are thus an abstract idea consistent with the types of ideas found to be abstract by the courts (Cyberfone). (Final Act. 7–8). We agree with the Examiner that claim 22 is directed to at least comparing data and using rules to identify options which is a “mental process—concepts performed in the human mind (including an observation, evaluation, judgment, opinion).” Guidance 84 Fed. Reg. 52. The patent- ineligible end of the spectrum includes mental processes. Id. The Federal Circuit has held similar concepts to be abstract. Thus, for example, the Federal Circuit has held that abstract ideas include the concepts of collecting data, analyzing the data, and reporting the results of the collection and Appeal 2018-000202 Application 13/181,245 15 analysis, including when limited to particular content. See, e.g., Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1340 (Fed. Cir. 2017) (identifying the abstract idea of collecting, displaying, and manipulating data); Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016) (characterizing collecting information, analyzing information by steps people go through in their minds, or by mathematical algorithms, and presenting the results of collecting and analyzing information, without more, as matters within the realm of abstract ideas). Turning to the second prong of the “directed to” test, claim 22 only generically recites “a memory,” “a computer hardware processor,” and “a primary integrated delivery network.” These components are described in the specification at a high level of generality. See Spec. 34:21–31, 35:1–31, 36:1–31, 37:1–7. We fail to see how the generic recitations of these most basic computer components and/or of a system so integrates the judicial exception as to “impose[] a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.” Guidance 84 Fed. Reg. at 53. Thus, we find that the claims recite the judicial exception of a mental process that is not integrated into a practical application. That the claims do not preempt all forms of the abstraction or may be limited to image repair, does not make them any less abstract. See OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362–63 (Fed. Cir. 2015) (“And that the claims do not preempt all price optimization or may be limited to price optimization in the e-commerce setting do not make them any less abstract.”). Appeal 2018-000202 Application 13/181,245 16 Turning to the second step of the Alice analysis, because we find that the claims are directed to abstract ideas/judicial exceptions, the claims must include an “inventive concept” in order to be patent-eligible, i.e., there must be an element or combination of elements sufficient to ensure that the claim in practice amounts to significantly more than the abstract idea itself. See Alice, 573 U.S. at 217–18 (quoting Mayo Collaborative Servs., 566 U.S. at 72–73). Concerning this step the Examiner found the following: The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional limitations, other than the abstract idea per se, amount to no more than limitations which require no more than a generic computer to perform generic computer functions that are well understood, routine, and conventional activities previously known to the industry. (Final Act. 9). We agree with the Examiner. “[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, 573 U.S. at 225. 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 create, capture, execute, identify, apply decision criteria to data to generate a result, and transmit and update data amounts to electronic data query and transmit same are some of the most basic functions of a computer. All of these computer functions are well-understood, routine, conventional activities previously known to the industry. See Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d at 1354; see also In re Katz Interactive Call Appeal 2018-000202 Application 13/181,245 17 Processing Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011) (“Absent a possible narrower construction of the terms ‘processing,’ ‘receiving,’ and ‘storing,’ . . . those functions can be achieved by any general purpose computer without special programming”). 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’ claims add nothing that is not already present when the steps are considered separately. The sequence of data reception-analysis (creating, capturing, executing, identifying, applying decision criteria to data generate a result (select),) and storing is equally generic and conventional or otherwise held to be abstract. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (sequence of receiving, selecting, offering for exchange, display, allowing access, and receiving payment recited an abstraction), Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017) (holding that sequence of data retrieval, analysis, modification, generation, display, and transmission was abstract), Two-Way Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (holding sequence of processing, routing, controlling, and monitoring was abstract). The ordering of the steps is, therefore, ordinary and conventional. Thus, the claims at issue amount to nothing significantly more than instructions to apply the abstract ideas of a mental process using some unspecified, generic computer. Under our precedents, that is not enough to transform an abstract idea into a patent-eligible invention. See Alice, 573 U.S. at 225–26. Appeal 2018-000202 Application 13/181,245 18 We have reviewed all the arguments Appellants have submitted concerning the patent eligibility of the claims before us that stand rejected under 35 U.S.C. § 101. (App. Br. 27–32, Reply Br. 3–4). We find that our analysis above substantially covers the substance of all the arguments, which have been made. But, for purposes of completeness, we will address various arguments in order to make individual rebuttals of same. Appellants argue: A first reason why the claims are directed to significantly more than an abstract idea is that the claims are directed towards ‘(i) improvements to another technology or technical field,’ rather than an abstract idea. As noted above, the subject claim(s) describe a process which manages medical imaging data in a medical cloud computing environment by using a medical digital image communications protocol adapter to create an original data structure having medical imaging data, executing an operation on the medical imaging data, capturing an interim data structure, identifying an execution failure with respect to the operation, selecting a repaired operation to correct the execution failure, and executing the repaired operation. App. Br. 28. We disagree with Appellants because Appellants offer insufficient evidence as to why reference to “a medical cloud computing environment” is meaningful beyond the face of the language itself other than being the way that data are carried within the network. There is no further discussion in the Specification of the particular technology for performing this claimed step. See Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1263 (Fed. Cir. 2016); see also Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 at 1336 (Fed. Cir. 2016) (focusing on whether the claim is “an improvement to the computer functionality itself, not on economic or other tasks for which a computer is used in its ordinary capacity.”) The claims do not describe any Appeal 2018-000202 Application 13/181,245 19 particular improvement in the manner a computer functions, at least with respect to the claims in the instant application. They do not recite any specific means constituting an improvement in the technical field or cloud based technology and related computing systems. See McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016). Instead, the claims at issue amount to nothing significantly more than an instruction to apply the abstract idea of comparing data and using rules to identify options 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. That the language includes a general reference to the use of a “medical cloud computing environment,” a “medical digital image communications protocol adapter to parse the request and extract the medical images” and a “medical digital image transaction cluster to select a repair operation to correct the execution failure” (Appeal Br. 28), does not make the corresponding generic recitations of these claimed basic computer components and/or of a system so effective as to integrate the judicial exception in a way that “imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.” Guidance 84 Fed. Reg. at 53. Absent evidence to the contrary, we view these items including the “medical cloud computing environment” to be only an indication of the environment in which the abstract idea is practiced. MPEP 2106.05(h) concern[s] generally linking use of a judicial exception to a particular technological environment or field of use, including a discussion of the exemplars provided herein, which are based on Bilski, 561 U.S. at 612, and Flook, 437 U.S. Appeal 2018-000202 Application 13/181,245 20 at 588-90. Thus, the mere application of an abstract method of organizing human activity in a particular field is not sufficient to integrate the judicial exception into a practical application. Guidance 84 Fed. Reg. at 53 n.32, see also Alice Corp., 573 U.S. at 223. Citing to Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016), Appellants further argue, Applicant respectfully submits that the claims do not merely recite the application of an abstract idea performed using generic computer components, a fundamental economic practice, a mathematical relationship/formula, a method of organizing human activity, an idea standing alone, and cannot be performed solely in the human mind or using pen and paper. As such, the Office Action improperly applied a ‘high level of abstraction.’ (Appeal Br. 29). We disagree with Appellants. First, Appellants provide no evidence that the method “cannot be performed solely in the human mind or by using pen and paper.” See e.g., CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011). Second, we also disagree with Appellants that similar to the holding in Enfish, the claimed solution is directed to a specific improvement to the way computers operate.” (Appeal Br. 29). In Enfish, the invention at issue there was directed at a wholly new type of logical model for a computer database: a self-referential table that allowed the computer to store many different types of data in a single table and index that data by column and row information. Enfish, 822 F.3d at 1330–32. In finding the claims “not directed to an abstract idea,” but “to a specific improvement to the way computers operate,” the Federal Circuit noted that “the claims are not simply directed to any form of storing tabular data, but instead are specifically directed to a self-referential table for a computer database.” Enfish, 822 Appeal 2018-000202 Application 13/181,245 21 F.3d at 1336–37 (emphasis in original). We find nothing in the claims before us arising to this level of technical improvement in the claimed “memory,” “computer hardware processor,” and “primary integrated delivery network” which arises to the level of technical proficiency as found in Enfish. Instead, we find the claims are focused on a mental process. Citing to DDR Holdings, LLC v. Hotels.com, L.P. 773 F.3d 1245 (Fed. Cir. 2014), Appellants argue that “the claimed solution is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm(s) of computer networks or medical imaging data management.” App. Br. 30. In DDR Holdings, the Court evaluated the eligibility of claims “address[ing] the problem of retaining website visitors that, if adhering to the routine, conventional functioning of Internet hyperlink protocol, would be instantly transported away from a host’s website after ‘clicking’ on an advertisement and activating a hyperlink.” Id. at 1257. There, the Court found that the claims were patent eligible because they transformed the manner in which a hyperlink typically functions to resolve a problem that had no “pre-Internet analog.” Id. at 1258. The Court cautioned, however, “that not all claims purporting to address Internet-centric challenges are eligible for patent.” Id. For example, in DDR Holdings the Court distinguished the patent- eligible claims at issue from claims found patent-ineligible in Ultramercial. See id. at 1258–59 (citing Ultramercial, 772 F.3d 7 0 9 , 715–16 (Fed. Cir. 2014)). As noted there, the Ultramercial claims like those before us here, were directed to an abstraction. Although we agree with Appellants that the claims must be read, as a whole (Appeal Br. 30), we nevertheless find, on balance, that claim 1 is Appeal 2018-000202 Application 13/181,245 22 directed to comparing data and using rules to identify options for the reasons specified above with respect to our “directed to” findings. As found supra, claim 1 only includes the following generically recited device limitations: “a memory,” “a computer hardware processor,” and “a primary integrated delivery network.” What remains in the claim after disregarding these device limitations, are abstractions, i.e., “identifying, using an error table, a cause of an execution failure with respect to the medical imaging data operation on the medical imaging data, wherein the execution failure includes the second portion but not the first portion.” “A claim for a new abstract idea is still an abstract idea.” Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (citing Mayo, 566 U.S. at 90). To the extent Appellants are arguing that these are additional elements constituting an inventive concept, such features cannot constitute the “inventive concept.” Berkheimer v. HP, Inc., 890 F.3d 1369, 1374 (Fed. Cir. 2018) (Moore, J., concurring) (“It is clear from Mayo that the ‘inventive concept’ cannot be the abstract idea itself, and Berkheimer . . . leave[s] untouched the numerous cases from this court which have held claims ineligible because the only alleged ‘inventive concept’ is the abstract idea.”); see also BSG Tech. LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) (“It has been clear since Alice that a claimed invention’s use of the ineligible concept to which it is directed cannot supply the inventive concept that renders the invention ‘significantly more’ than that ineligible concept.”). For the reasons identified above, we determine there are no deficiencies in the Examiner’s determination of patent ineligibility of the rejected claims. Therefore, we will sustain the Examiner’s § 101 rejection of claims 22–42. Appeal 2018-000202 Application 13/181,245 23 35 U.S.C. § 103(a) REJECTION Each of independent claims 22, 32, 33 requires, in one form or another, “identifying, using an error table, a cause of an execution failure with respect to the medical imaging data operation on the medical imaging data, wherein the execution failure includes the second portion but not the first portion.” The Examiner found, concerning this limitation that Berstis discloses, the following: identifying, using an error table, a cause of an execution failure with respect to the medical imaging data operation on the medical imaging data (See column 8, line 14-line 50, database for looking up error messages, corrective action column indicates the corrective action to be initiated, Fig 9, also see column 8, line 51 through column 9, line 15, Fig 10), wherein the execution failure includes the second portion but not the first portion; (Final Act. 14). Appellants argue the following: as claimed, the present disclosure would look-up an error code to identify the nature of the failure such as insufficient storage and inadequate bandwidth (e.g., perhaps with values/amounts thereof). In particular, the nature of the failure may be particularly useful when a single data structure has a first portion which succeeds and a second portion which fails (as claimed). Aspects of the present disclosure may provide more granularity in order to provide a better solution, whereas the proposed combination/modification, at best, more bluntly proceeds with a corrective action (e.g., selecting the corrective action merely from the error message) without identifying the cause of the failure (and using the cause of the execution failure to make a selection) as claimed by the present disclosure. Even under the broadest reasonable interpretation, the Examiner's construction ‘cannot be divorced from the specification and the record Appeal 2018-000202 Application 13/181,245 24 evidence,’ NTP, 654 at 1288, and ‘must be consistent with the one that those skilled in the art would reach,’ Copyright, 165 F.3d at 1358. (Appeal Br. 15–16). We agree with Appellants. According to Berstis, The process begins by looking up the error message to a database of error messages (step 700). A determination is made as to whether corrective action is required (step 702). If corrective action is required, the process then initiates the corrective action based on the results of the comparison of the error message to the database (step 704) with the process terminating thereafter. (Col. 8, ll. 4–24). We fail to see how the processing of an error message which already indicates a cause of failure, equates to “identifying, using an error table, a cause of an execution failure with respect to the medical imaging data operation on the medical imaging data.” In Berstis, the error message already contains the claimed “cause of an execution failure” because a hook function makes this determination first by “take[ing] the error messages and an analysis is made as to whether the message that will be displayed to the user is useful. If it is not useful, the hook function either reformats the message into a useful message or cancels the display of that error message.” (Col. 7, ll. 26–30). Thereafter, as Berstis states in Col. 8, ll. 4–24, the looking up of the error message to a database is done to determine whether corrective action is required, which is not a determination of a cause, but a remedy. It is not apparent from the record, and the Examiner has not cogently explained, why one of ordinary skill in the art would consider determining corrective action to be the obvious variant of determining a cause. Therefore, we will not sustain the rejection of independent claims 22, 32, 33. Appeal 2018-000202 Application 13/181,245 25 Since claims 23–31, 35–42, depend from claim 22 and claim 34 depends from claim 33, and since we cannot sustain the rejection of independent claims 22 and 33, and because none of the additional references used the rejection of the dependent claims remedies the above deficiency in Berstis, we cannot sustain the Examiner’s obviousness rejection of claims 23–31, 35–42 and 34. CONCLUSIONS OF LAW We conclude the Examiner did not err in rejecting claims 22–42 under 35 U.S.C. § 101. We conclude the Examiner erred in rejecting claims 22–42 under 35 U.S.C. § 103. We conclude the Examiner did not err in rejecting claims 31, 35, and 37 under 35 U.S.C. § 112, first paragraph, and erred in rejecting claims 38 and 39 under 35 U.S.C. § 112, first paragraph. We do not reach the Examiner’s provisional rejection of claims 22–42 on the ground of non-statutory obviousness-type double-patenting. DECISION 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 Copy with citationCopy as parenthetical citation