KONINKLIJKE PHILIPS N.V.Download PDFPatent Trials and Appeals BoardApr 30, 20212020001366 (P.T.A.B. Apr. 30, 2021) 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. 15/770,515 04/24/2018 Gabriel Ryan Mankovich 2015P00998WOUS 1021 24737 7590 04/30/2021 PHILIPS INTELLECTUAL PROPERTY & STANDARDS 465 Columbus Avenue Suite 340 Valhalla, NY 10595 EXAMINER MERCADO VARGAS, ARIEL ART UNIT PAPER NUMBER 2176 NOTIFICATION DATE DELIVERY MODE 04/30/2021 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): katelyn.mulroy@philips.com marianne.fox@philips.com patti.demichele@Philips.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE _____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _____________ Ex parte GABRIEL RYAN MANKOVICH, ROBBERT CHRISTIAAN VAN OMMERING, and LUCAS DE MELO OLIVEIRA _____________ Appeal 2020-001366 Application 15/770,515 Technology Center 2100 ______________ Before ROBERT E. NAPPI, ST. JOHN COURTENAY, III, and ERIC S. FRAHM, Administrative Patent Judges. FRAHM, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1, 2, and 4–17. Claim 3 has been canceled 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. “The word ‘applicant’ when used in this title refers to the inventor or all of the joint inventors, or to the person applying for a patent as provided in §§ 1.43, 1.45, or 1.46.” 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Koninklijke Philips N.V. (Appeal Br. 2). Appeal 2020-001366 Application 15/770,515 2 (Appeal Br. 2, 19). We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Introduction Appellant’s Disclosed and Claimed Invention Appellant’s disclosed invention “relates to the field of medical information systems, and in particular to a system and method that uses user feedback to identify pertinent words or phrases for efficient and effective data extraction from text documents” (see Spec. 1:2–4). More specifically, Appellant has recognized the need, in the medical diagnosis and treatment environment, for medical practitioners to (i) identify medical record information in a medical record that is in free-form text and pertinent to that practitioner’s specialty field (see Spec. ¶ 1:16–24); and (ii) save time in finding such pertinent information (see Spec. 2:1–4), by displaying only pertinent terms (e.g., words and phrases) by allowing practitioners to define such pertinent terms (see Spec. 2:5–26; see e.g., Figs. 1A–C). With this in mind, Appellant discloses and claims methods and systems for allowing practitioners to select pertinent terms and make “proposed modifications” to add/remove selected pertinent terms to/from a vocabulary of pertinent terms (claims 1, 7, 11). Illustrative Claims 1. A non-transitory computer readable medium that includes a program that, when executed by a processing system, causes the processing system to: receive a vocabulary of pertinent terms from a provider that provides the vocabulary to a plurality of practitioners; receive a request from a practitioner for a patient record; process the patient record to identify pertinent terms in the patient record based on the vocabulary of pertinent terms; Appeal 2020-001366 Application 15/770,515 3 display the identified pertinent terms in the patient record in a distinctive manner to the practitioner; receive, from the practitioner, a selection of a displayed pertinent term, and an identification of a proposed modification to remove the selected pertinent term from the vocabulary of pertinent terms; [A] communicate the proposed modification of the vocabulary to the provider of the vocabulary; and subsequently receiving an updated vocabulary of pertinent terms from the provider based on the proposed modification of the vocabulary by the practitioner and also based on one or more proposed modifications from the plurality of practitioners to add a new term to the vocabulary of pertinent terms, and one or more proposed modifications to remove an existing term from the vocabulary of pertinent terms. Appeal Br. 19, Claims Appendix (formatting, bracketed lettering, and emphasis added). 7. A non-transitory computer readable medium that includes a program that, when executed by a processing system, causes the processing system to: provide a vocabulary of pertinent terms to a plurality of text annotation systems; receive proposed modifications to the vocabulary of pertinent terms from two or more of the plurality of text annotation systems, wherein the proposed modifications include modifications that add a term to the vocabulary and modifications that remove a term from the vocabulary; [B] assimilate the proposed modifications to the vocabulary to determine whether an update to the vocabulary of pertinent terms is warranted; [C] updating the vocabulary of pertinent terms when the update is determined to be warranted; and providing the updated vocabulary of pertinent terms to one or more of the pluralities of text annotation systems. Appeal Br. 20, Claims Appendix (formatting, bracketed lettering, and emphasis added). Remaining independent claim 11 recites features commensurate in scope with claim 7, namely assimilating proposed Appeal 2020-001366 Application 15/770,515 4 modifications and updating the vocabulary of pertinent terms when warranted (see e.g., claim 7 limitations B and C). Examiner’s Rejections (1) The Examiner rejected claims 7–15 under 35 U.S.C. § 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which Appellant regards as the invention. Final Act. 3–4. (2) The Examiner rejected claims 11–15 under 35 U.S.C. § 101 as being directed to a judicial exception such as an abstract idea (e.g., software per se), without significantly more (see Final Act. 4–5). (3) The Examiner rejected claims 1, 2, 4–7, and 11–13 as being anticipated under 35 U.S.C. § 102(a)(1) by Strongwater (US 2015/0046190 A1; published Feb. 12, 2015). Final Act. 5–21. (4) The Examiner rejected claims 8–10 and 14–17 as being unpatentable under 35 U.S.C. § 103 over Strongwater and Haijun Zhai, PhD et al., Web 2.0-Based Crowdsourcing for High-Quality Gold Standard Development in Clinical Natural Language Processing, JOURNAL OF MEDICAL INTERNET RESEARCH, vol. 15, issue 4, pp. 1–17 (April 4, 2013) (hereinafter, “Zhai”). Final Act. 21–28. ISSUES Based on Appellant’s arguments in the Appeal Brief (Appeal Br. 7–13) and the Reply Brief (Reply Br. 2–14), the following issues are presented on appeal: (1) Did the Examiner err in rejecting claims 7–15 under 35 U.S.C. § 112(b), for being indefinite? Appeal 2020-001366 Application 15/770,515 5 (2) Did the Examiner err in rejecting claims 11–15 under 35 U.S.C. § 101 based on claim 11 being directed to non-statutory subject matter (e.g., software per se)? (3) Based on the Examiner’s improper interpretation of the claim term “proposed modification” recited in claims 1, 7, and 11, did the Examiner err in rejecting claims 1, 2, 4–7, and 11–13 under 35 U.S.C. § 102(a)(1) as being anticipated by Strongwater (and as a result, also err in rejecting claims 8–10 and 14–17 depending from respective ones of claims 1, 7, and 11 as being unpatentable under 35 U.S.C. § 103 over Strongwater combined with Zhai)? ANALYSIS Issue (1): Indefiniteness With regard to claims 7–15, the Examiner finds limitations B and C recited in claim 7, and the commensurate limitations recited in claim 11, constitute conditional language and make the scope of claims 7–15 indefinite (see Final Act. 3; Ans. 8). The Examiner finds that determining whether the proposed modification is warranted and updating the vocabulary only if the proposed modification is warranted, renders the claims indefinite (see Final Act. 3–4). The Examiner then states: For purposes of the examination the examiner is interpreting the claims as “assimilate the proposed modifications to the vocabulary to determine ‘that’ an update to the vocabulary of pertinent terms is warranted.” Final Act. 3–4. In other words, the Examiner interprets claims 7 and 11 to read out the term “whether” and replace “whether” with “that,” and thus changes the meaning of the claims. Appeal 2020-001366 Application 15/770,515 6 We are persuaded by Appellant’s arguments (Appeal Br. 9; Reply Br. 4–6) that the Examiner erred in concluding that claims 7–15 are indefinite for failing to particularly point out and distinctly claim the subject matter which Appellant regards as the invention. A claim is indefinite when it contains words or phrases whose meaning is unclear. In re Packard, 751 F.3d 1307, 1314 (Fed. Cir. 2014). Under 35 U.S.C. § 112, second paragraph, the test for definiteness is whether “those skilled in the art would understand what is claimed when the claim is read in light of the specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986). Language in a claim is unclear if, when given its broadest reasonable interpretation, it is “ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention . . .” (In re Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014)). Because the language of 35 U.S.C. § 112(b) is substantially the same as its predecessor, 35 U.S.C. § 112, second paragraph, the same test for definiteness applies here. Breadth is not indefiniteness. Here, the terms “determine whether” and “when the update is determined to be warranted” (see e.g., claim 7, limitations B and C) have sufficient meaning that one of ordinary skill in the art would understand what these terms mean. We agree with Appellant that “[t]he function of the phrase ‘determine whether’ is not ambiguous or uncertain” (Appeal Br. 9). We also agree with Appellant’s contention that “‘[d]etermining whether’ provides a binary output: either the update is warranted, or the update is not warranted,’” whereas the Examiner’s interpretation of “‘[d]etermining that’ provides a single output: the update is warranted’” (Appeal Br. 9). As a result, Appellant’s contention that “the Examiner’s assertion that the word Appeal 2020-001366 Application 15/770,515 7 ‘whether’ in the phrase ‘determines whether’ renders the claims indefinite is clearly erroneous” (Appeal Br. 9), is persuasive. The Examiner also concludes that “the claim is silent regarding how a proposed modification to the vocabulary is determined to be warranted or not, the claim is silent regarding how the claim is performing such alleged determination” (Ans. 8). However, we agree with Appellant “that the particular criteria used to determine whether a proposed modification is warranted is not a critical feature of the claim[s], and the absence of details regarding how a proposed modification is determined to be warranted does not render the claims indefinite under 35 U.S.C. 112(b)” (Reply Br. 5). Finally, we agree with Appellant that the Specification provides adequate support for the assimilation and updating steps set forth in claims 7 and 11 (see Reply Br. 5 citing Spec. 8:6–10:2). We conclude that “those skilled in the art would understand what is claimed when the claim[s] [are] read in light of the specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d at 1576. As a result, we do not sustain the Examiner’s indefiniteness rejection of claims 7–15. Issue (2): Eligibility of Statutory Subject Matter The Examiner concludes that claims 11–15 are “directed to non- statutory subject matter” (Final Act. 4) because “the present application fails to expressly limit any of the recited components to a computer hardware embodiment” (Final Act. 4). The Examiner concludes that claim 11 fails to recite any statutory subject matter, and is instead limited to software elements, or software per se (Final Act. 4). However, a “network of text annotation systems comprising: a database” (claim 11) recites a database which “must be located in some form of physical memory (hardware)” Appeal 2020-001366 Application 15/770,515 8 because “absent the physical memory, there is nowhere to store the data” (Appeal Br. 7). Appellant’s contention that one of skill in the art would recognize that a database must be stored in memory, a text annotation system must include hardware that enables a user to view and annotate textual information, and a knowledge module that receives, processes, and provides information to and from text annotation systems and to and from a database must be embodied in hardware that physically transfers the electrons representing such information (Reply Br. 3), is persuasive. Therefore, we agree with Appellant (see Appeal Br. 7) that the Examiner erred in rejecting claims 11–15 under 35 U.S.C. § 101 based on claim 11 being directed to non-statutory subject matter (e.g., software per se). Accordingly, we do not sustain the Examiner’s eligibility rejection of claims 11–15 under 35 U.S.C. § 101.2 Issue (3): Anticipation and Obviousness We have reviewed the Examiner’s obviousness rejections (Final Act. 5–28) in light of Appellant’s arguments (Appeal Br. 10–17; Reply Br. 6–14) that the Examiner has erred, as well as the Examiner’s response to 2 We leave it to the Examiner in the event of further prosecution, including any review prior to allowance, to consider a rejection under 35 U.S.C. § 101 in light of the Director’s 2019 Revised Guidance, as updated in the October 2019 Patent Eligibility Guidance Update, (found in the Ninth Edition, Revision 10.2019 (revised June 2020) of the Manual of Patent Examination Procedure (MPEP), and particularly within Sections 2103 through 2106.07(c)) for all claims 1, 2, and 4–17 on appeal. In particular, the Examiner should consider whether claims 1, 7, and 11 recite abstract ideas, such as the organization of human activity and mental processes. Although the Board is authorized to reject claims under 37 C.F.R. § 41.50(b), no inference should be drawn when the Board elects not to do so. See Manual of Patent Examining Procedure (MPEP) § 1213.02. Appeal 2020-001366 Application 15/770,515 9 Appellant’s arguments in the Briefs (Ans. 9–21). We concur with Appellant’s contentions that the Examiner erred in finding (i) claims 1, 2, 4– 7, and 11–13 anticipated by Strongwater (Appeal Br. 10–17; Reply Br. 6– 13); and, as a result, (ii) claims 8–10 and 14–17 obvious over Strongwater in view of Zhai (Appeal Br. 17; Reply Br. 13–14). Strongwater displays medical reports with key terms highlighted (see Fig. 4, step 404; ¶ 30), and receives instructions from a practitioner to edit/change key terms and then updates a user profile (see Fig. 4, steps 412 and 414; ¶ 32). However, Strongwater always assimilates and updates the received changes (see Strongwater ¶¶ 30–32, 48, 51). In this light, Appellant’s contentions (as to claims 1, 7, and 11) that Strongwater fails to disclose evaluating proposed modifications and whether the proposed modifications should be applied to the vocabulary (see Appeal Br. 10–11; Reply Br. 6–7), are persuasive. As to claims 7 and 11, Appellant’s arguments that Strongwater does not disclose assimilating proposed modifications to the vocabulary from a plurality of text annotation systems to determine whether an update to the vocabulary of pertinent terms is warranted and updating the vocabulary of pertinent terms when the update is determined to be warranted, as claimed in independent claims 7 and 11 (Appeal Br. 16; Reply Br. 12) (emphasis omitted), are also persuasive. Appellant’s arguments have persuaded us of error in the Examiner’s rejections of claims 1, 2, and 4–17. Accordingly, we do not sustain the Examiner’s anticipation and obviousness rejections of which rely on the same base reference to Strongwater. Appeal 2020-001366 Application 15/770,515 10 CONCLUSION For all of the reasons above, we hold as follows: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 7–15 112(b) Indefiniteness 7–15 11–15 101 Eligibility 11–15 1, 2, 4–7, 11–13 102(a)(1) Strongwater 1, 2, 4–7, 11–13 8–10, 14–17 103 Strongwater, Zhai 8–10, 14–17 Overall Outcome 1, 2, 4–17 REVERSED Copy with citationCopy as parenthetical citation