KONINKLIJKE PHILIPS N.V.

Patent Trials and Appeals Board

Aug 27, 2020

2020000362 (P.T.A.B. Aug. 27, 2020)

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.
15/022,252 03/16/2016 IWO WILLEM OSCAR SERLIE 2013P00899WOUS 1004
24737 7590 08/27/2020
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus Avenue
Suite 340
Valhalla, NY 10595
EXAMINER
COBANOGLU, DILEK B
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
08/27/2020 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 IWO WILLEM OSCAR SERLIE
____________

Appeal 2020-000362
Application 15/022,252
Technology Center 3600
____________

Before MAHSHID D. SAADAT, JOHN A. JEFFERY, and
LARRY J. HUME, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL

Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 16–34, which constitute all the claims pending in
this application. 2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

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
Koninklijke Philips Electronics N. V. Appeal Br. 2.
2 Claims 1–15 and 35 have been canceled.
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STATEMENT OF CASE
Introduction
Appellant’s Specification is directed to “a system and a method for
enabling review of a medical image and for generating a report on the
review of the medical image.” Spec. 1:2–3. According to Appellant, the
disclosed invention advantageously provides “a system or method which
enables standardized reporting of medical information at a reduced burden to
the user.” See Spec. 2:14–15.
Claim 16, which is reproduced below, is illustrative:
16. A medical diagnostic system comprising:
a display device that displays a medical image;
a user interface that enables a user to apply a graphic
element to the medical image on the display device during a
radiological review of the medical image, wherein the graphic
element provides measurement data relative to an anatomic
feature in the medical image;
a processing system that:
accesses a medical database comprising a plurality
of medical information items corresponding to medical
reference information;
selects a selected medical information item from
the plurality of medical information items based on the
measurement data;
augments the medical information item with the
measurement data; and
generates a radiology report based on the
augmented medical information item.
Rejections on Appeal
Claims 16–34 stand rejected under 35 U.S.C. § 101 for being directed
to patent-ineligible subject matter. See Final Act. 2–6.
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Claims 16–34 stand rejected under 35 U.S.C. § 102(a)(1) as being
anticipated by Vining (US 2002/0131625 Al; pub. Sept. 19, 2002). Final
Act. 6–9.
ANALYSIS
“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). Arguments Appellant could have
made, but chose not to make, are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(l)(iv).
35 U.S.C. § 101 REJECTION
Rejection
The Examiner determines the claims are directed to “an abstract idea
of generating a medical report based on the augmented medical information
item” which “is an abstract idea because it may be further analogized to
collecting information, analyzing the collected information, and displaying
the results. Final Act. 2–3. The Examiner also finds that
The claims do not include additional elements that are
sufficient to amount to significantly more than the judicial
exception because the additional elements, other than the
abstract idea per se, when considered both individually and as
an ordered combination, amount to no more than limitations
consistent with what the courts have recognized, or those in the
art would recognize, to be well-understood, routine, and
conventional.
Final Act. 3. In that regard, the Examiner points to paragraphs 56–58 of
Appellant’s Specification and asserts “the current invention only requires
that the limitation be performed by any generic computer.” Final Act. 3–4.
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Principles of Law
Patent-eligible subject matter is defined in 35 U.S.C. § 101 of the
Patent Act, which recites:
Whoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new
and useful improvement thereof, may obtain a patent therefor,
subject to the conditions and requirements of this title.
There is, however, an implicit, longstanding exception to patent-
eligible subject matter in 35 U.S.C. § 101: “[l]aws of nature, natural
phenomena, and abstract ideas are not patentable.” Alice Corp. v. CLS Bank
Int’l, 573 U.S. 208, 216 (2014) (citation omitted). This exception precludes
patenting of “the basic tools of scientific and technological work” from
which all inventions spring. Id. at 216–17 (quotation marks and citation
omitted). Invention or discovery under § 101 is distinguished as being the
application of such tools to an end otherwise satisfying the requirements of
the patent statutes. See Gottschalk v. Benson, 409 U.S. 63, 67 (1972).
The Supreme Court has established a framework for this eligibility
determination. Where a claim is directed towards a law of nature, natural
phenomena, or abstract idea, the elements of the claim as a whole must
ensure that the claim, in practice, amounts to significantly more than a patent
on the law of nature, natural phenomena, or abstract idea itself. Alice, 573
U.S. at 217–18. In applying this eligibility analysis, our reviewing court has
stated, “the decisional mechanism courts now apply is to examine earlier
cases in which a similar or parallel descriptive nature can be seen[,] . . . the
classic common law methodology for creating law when a single governing
definitional context is not available.” Amdocs (Isr.) Ltd. v. Openet Telecom,
Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) (citation omitted).
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In January 2019, the USPTO published revised guidance on the
application of § 101. See USPTO’s 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”). Under
that guidance (“Step 2A”), the office first looks to whether the claim recites:
(1) Prong One: 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) Prong Two: additional elements that integrate the judicial
exception into a practical application (see MANUAL OF PATENT
EXAMINING PROCEDURE (MPEP) §§ 2106.05(a)–(c), (e)–(h)
(9th ed. Rev. 10. 2019, June 2020)).
Only if a claim (1) recites a judicial exception, and (2) does not
integrate that exception into a practical application, do we then (pursuant to
the Guidance “Step 2B”) look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not well-understood, routine, and conventional in the field
(see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, and conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See Guidance, 84 Fed. Reg. at 56.
We review the appealed rejections for error based upon the issues
Appellant identifies, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections.”). After considering the
argued claims in light of the case law presented in this Appeal and each of
Appellant’s arguments, we are not persuaded the Examiner’s rejection is in
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error. We adopt the Examiner’s findings and conclusions as our own, to the
extent consistent with our analysis herein. We add the following primarily
for emphasis and clarification with respect to the Guidance.
I. Step 2A
Appellant contends that, unlike the claims in Electric Power Group,
LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016), the recited “selecting a
medical information item based on the application of the user-selected
graphic element goes well beyond the ‘passive’ collection of available data.”
Appeal Br. 6–7. According to Appellant, claim 16 “requires using the user-
provided selection of a graphic element in order to select the particular item
from the database.” Appeal Br. 7.
We are not persuaded of Examiner error.
Prong One
Pursuant to the Guidance, we agree with the Examiner that claim 16 is
directed to an abstract idea, and more specifically to a medical diagnostic
system including a display, a user interface, and a processing system for
applying a graphic element to the image for providing measurement data to
an anatomic feature of the image, accessing a medical data base, selecting a
medical information item based on the measurement data, augmenting the
medical information with the measurement data, and generating a radiology
report. See Ans. 3–4. Appellant does not specifically argue that the claim
does not recite an abstract idea, but contrasts the claimed limitations from
the claims in Electric Power. Appeal Br. 6–8.
The Guidance states that the abstract idea exception includes
mathematical concepts, certain methods of organizing activity, and mental
processes. Guidance, 84 Fed. Reg. at 52. The Guidance describes mental
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processes as observations, evaluations, judgements, and opinions, where
such can be practically performed in the human mind. October 2019
Update: Subject Matter Eligibility 7, accessible at https://www.uspto.gov/
sites/default/files/documents/peg_oct_2019_update.pdf. Cases reciting steps
of collecting, comparing, and analyzing known information, which are
practically performed in the human mind, are provided as examples of such
mental processes. Id. at 7–8 (citing Classen, 3 Electric Power).
We determine that claim 16 recites an act of judgment and evaluation
in the form of the above-cited limitations, which allows a user access
medical information from a database, such as a book, select an information
item, augment the item with measurement information provided by the user,
to include in a radiology report. Such acts are characteristic of mental
processes, which comprise a category of abstract ideas. October 2019
Update, 7–9; Cybersource v. Retail Decisions, 654 F.3d 1366, 1372 (Fed.
Cir. 2011) (finding steps extending to “essentially any method of detecting
credit card fraud based on information relating past transactions,” to be an
unpatentable mental process) and FairWarning IP, LLC v. Iatric Systems,
Inc., 839 F.3d 1089, 1093–94 (Fed. Cir. 2016) (finding claims to “detecting
fraud and/or misuse in a computer environment based on analyzing data
such as in log files, or other similar records, including user identifier data” to
be an ineligible mental process).
We further observe that claim 16 describes functions related to
providing certain measurements to an anatomic feature in a medical image
and generating a radiology report based on an augmented medical

3 Classen Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057 (Fed. Cir.
2011) (collecting and comparing known information).
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information item and the measurement data, which are directed to
“managing personal behavior, relationships and interactions between people
(including social activities, teaching, and following rules or instructions).”
Guidance, 84 Fed. Reg. at 52. Pursuant to the Guidance, such limitations are
the abstract concept of “[c]ertain methods of organizing human activity.” Id.
Prong Two
We are not persuaded the Examiner’s rejection is in error pursuant to
Step 2A, Prong Two of the Guidance. Appellant has not shown the claim
includes additional elements that improve the underlying computer or other
technology. Appellant explains the claims “are directed to a system and
medium that improves the accuracy and efficiency of diagnostic reporting in
radiology reports.” Appeal Br. 8. According to Appellant, the claims “are
directed to enabling a user to select a graphic tool to perform a measurement
on a displayed image, and automatically generating at least a portion of the
radiology report by selecting and augmenting a medical information item
based on the user’s application of that graphic tool.” Id.
We are not persuaded. As the Examiner explains, the additional
generic computer elements include displaying a medical image and
providing a user interface so that user to apply a graphic element to the
medical image. Ans. 4; see also Spec. 9:12–10:2 (describing generic display
and user interface). Although Appellant’s alleged improvement to the
underlying technology is described as generating more accurate and efficient
radiology reports, the recited functions simply involve selecting an
information item based on the measurement data and augmenting the
information data with the measurement. See Appeal Br. 8; Reply Br. 2–4;
Ans. 4–5. As such, the claimed invention does not improve the computer or
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its components’ functionality or efficiency, or otherwise change the way
those devices function, at least in the sense contemplated by the Federal
Circuit in Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016),
despite Appellant’s arguments to the contrary (Appeal Br. 10; Reply Br. 3).
The claimed self-referential table in Enfish was a specific type of data
structure designed to improve the way a computer stores and retrieves data
in memory. Enfish, 822 F.3d at 1339. To the extent Appellant contends that
the claimed invention uses such a data structure or using the stored medical
information to improve a computer’s functionality or efficiency, or
otherwise change the way that device functions, there is no persuasive
evidence on this record to substantiate such a contention. Unlike the
inventive concept found in DDR (“modification of conventional mechanics
behind website display to produce dual-source integrated hybrid display”
where “[T]he claimed solution is necessarily rooted in computer technology
in order to overcome a problem specifically arising in the realm of computer
networks.”) (see Appeal Br. 11–12), the claims at issue here merely require
“off-the-shelf, conventional, computer, network, and display technology.”
See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir.
2014).
Additionally, “merely adding computer functionality to increase the
speed or efficiency of the process does not confer patent eligibility on an
otherwise abstract idea.” Intellectual Ventures I LLC v. Capital One Bank
(USA), 792 F.3d 1363, 1370 (Fed. Cir. 2015). Moreover, Appellant’s
purportedly improved abstract concept of “enabling a user to select a graphic
tool to perform a measurement on a displayed image, and automatically
generating at least a portion of the radiology report by selecting and
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augmenting a medical information item based on the user’s application of
that graphic tool (Appeal Br. 8), is still an abstract concept under the
Guidance. See Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138,
1151 (Fed. Cir. 2016) (holding that “a claim for a new abstract idea is still an
abstract idea”) (emphasis omitted). That is, monitoring and recognizing
manual activities by receiving, storing, and transmitting information, even
performed on a computer, are parts of the recited abstract idea, as discussed
above. See also Ans. 3.
In another words, unlike the claimed invention in McRO that
improved how the physical display operated to produce better quality
images, the claimed invention here merely uses generic computing
components to collect and process medical information for analysis
presented in a report. This generic computer implementation is not only
directed to a mental process, but also does not improve the underlying
technology, such as a display mechanism as was the case in McRO. See
Reply Br. 3; McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299,
1314–15 (Fed. Cir. 2016) (finding claims not abstract because they “focused
on a specific asserted improvement in computer animation”); see also SAP
Am. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018) (distinguishing
McRO).
The holding in Core Wireless Licensing S.A.R.L. v. LG Elec., Inc., 880
F.3d 1356 (Fed. Cir. 2018) also shows why the abstract ideas in this case are
not integrated into a practical application. See Reply Br. 3. Unlike
Appellant’s claim 16, the claims in Core Wireless recited an improved user
interface. 880 F.3d at 1362. The claimed “application summary” specified a
particular manner to access a summary window, a particular type of data to
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be displayed in the summary window, and a particular time to display the
summary window when an application is in an un-launched state. Id. at
1362–63. The claims thus recited a specific improvement to user interfaces
that displayed a limited set of information using unconventional user
interface methods. Id. at 1363.
As the argued elements are part of the abstract idea, they are not
additional elements that integrate the identified abstract idea into a practical
application. See Guidance, 84 Fed. Reg. 54–55 (“[E]valuate integration into
a practical application by: (a) Identifying whether there are any additional
elements recited in the claim beyond the judicial exception(s)”).
Accordingly, we determine the claim does not integrate the judicial
exception into a practical application. See Guidance, 84 Fed. Reg. at 54.
Because we determine the “claim recites a judicial exception and fails to
integrate the exception into a practical application,” we proceed with
“further analysis pursuant to the second step of the Alice/Mayo test (USPTO
Step 2B).” Guidance, 84 Fed. Reg. at 51.
II. Step 2B
Appellant argues that
[G]enerating at least a part of a radiology report by
automatically selecting and annotating a medical information
item based on a user’s application of a particular graphic tool to
obtain measurement data, is a novel, useful, and practical
application of any abstract ideas that may underlie the specific
elements of the applicants’ claims.
Appeal Br. 9.
We agree with the Examiner that “[t]he claims do not include
additional elements that are sufficient to amount to significantly more than
the judicial exception because, ‘generating and displaying a report’ is a well-
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understood, routine, conventional computer function previously known to
the industry, specified at a high level of generality.” Ans. 4. The elements
highlighted by Appellant above, such as selecting and annotating a medical
information item and obtaining measurement data are part of the recited
judicial exception itself, as discussed above. See Final Act. 2–3; Ans. 30;
see also Guidance, 84 Fed. Reg. at 56 (“[E]valuate the additional elements
individually and in combination” in step 2B.); Guidance 56, n.24 (“USPTO
guidance uses the term ‘additional elements’ to refer to claim features,
limitations, and/or steps that are recited in the claim beyond the identified
judicial exception.”) (emphasis omitted).
Regarding the other elements, we agree with the Examiner and
observe that the claimed system, display device, user interface, processing
system, and the radiology report merely amount to the application or
instructions to apply the abstract idea (i.e., a series of steps for “selecting
and annotating a medical information item based on a user’s application of a
particular graphic tool to obtain measurement data,” which “amount to
nothing more than requiring a generic computer system (e.g. databases and
electronic devices) to merely carry out the abstract idea itself.
Additionally, we observe the Examiner has made the above findings
as required by the notice requirement of 35 U.S.C. § 132. See also In re
Jung, 637 F.3d at 1363 (declining “to impose a heightened burden on
examiners beyond the notice requirement of § 132”). In rejecting the
pending claims under § 101, the Examiner notified Appellant that the claims
recite steps that describe the abstract concept of “enabling user to apply a
graphical element to the medical image, accessing medical database and
selecting medical information item from the plurality of medical information
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items,” “augmenting the medical information,” and “generating a radiology
report,” a method of organizing human activity or mental processes, and that
the claims do not include additional elements that would amount to
significantly more than the abstract idea. See Final Act 2–6. In particular,
the Examiner found “[t]he computing elements of the instant process, when
taken alone, each execute in a manner routinely and conventionally expected
of these elements,” in accordance with Berkheimer v. HP Inc., 881 F.3d
1360, 1368 (Fed. Cir. 2018). Final Act. 3–5. The Examiner specifically
cited portions of Appellant’s Specification and Court decisions to establish
the recited database-related functions, storing and retrieving information,
and transmitting data over a network constitute elements that are well-
understood, routine and conventional to a skilled artisan. Id.; Ans. 3–5.
§ 101 Conclusion
Thus, we sustain the Examiner’s rejection of claims 16–34 under
35 U.S.C. § 101 for being directed to patent-ineligible subject matter.
35 U.S.C. § 102 REJECTION
In rejecting claim 16, the Examiner finds paragraphs 8–10 and 44–46
of Vining disclose the recited display device and the user interface and
paragraphs 29, 44, 51, and 59 of Vining disclose the recited processing
system that accesses a medical database, selects and augments a medical
information item, and generates a radiology report. Final Act. 6–7.
Appellant contends the cited portions of Vining do not expressly or
inherently teach the recited features of “a system that selects a medical
information item from a plurality of medical information items based
on measurement data in a graphic element applied to a medical image
by a user.” Appeal Br. 9. Appellant specifically argues paragraph 51 of
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Vining discloses adding the measurement automatically and “does not
address the applicants’ claimed feature of having the system determine the
particular medical information item to which the measurement is to be
added based on the measurement data obtained by applying selected
graphic element to the image.” Appeal Br. 9. According to Appellant, the
claimed invention requires a system that “assesses the measurement based
on the context and selects a medical information item that is to be
annotated with the measurement information, and in some instances,
provide a diagnostic classification based on the measurement information.”
Appeal Br. 11.
In the Answer, the Examiner further cites paragraph 56 of Vining as
disclosing the disputed limitation by providing “a link to reference materials
and example images.” Ans. 5–6. Appellant contends the Examiner’s newly
cited teachings in Vining also fail to anticipate the subject matter of claim 16
because Vining provides the reference material to the user “based on the
diagnostic code combination.” Reply Br. 5.
We agree with Appellant that the Examiner’s stated position and the
cited portions of Vining do not clearly identify the specific claim limitations
pointed out by Appellant. The user in Vining is taken to a database by
selecting the link, which at best, may meet the limitation related to selecting
a selected medical information item. However, the Examiner has not
identified sufficient details regarding the annotation menus (see Vining
¶¶ 44–46), that provide the link, to show which element corresponds to the
specific “selected medical information item.” In fact, rejections based on
section 102 must rest on a factual basis wherein the “burden of proof [is
placed] on the Patent Office which requires it to produce the factual basis for
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its rejection of an application under sections 102 and 103.” In re Piasecki,
745 F.2d 1468, 1471–72 (Fed. Cir. 1984) (citing In re Warner, 379 F.2d
1011, 1016 (CCPA 1967)). The examiner may not, because of doubt that
the invention is patentable, resort to speculation, unfounded assumption or
hindsight reconstruction to supply deficiencies in the factual basis for the
rejection. See In re Warner, 379 F.2d at 1017.
Here, the Examiner has not produced a factual basis supported by the
prior art teachings and by identifying the exact disclosure of Vining that
meet the claimed features, nor has addressed all the limitations argued by
Appellant to be missing in the reference. As such, we find the Examiner
erred in rejecting independent claim 16, independent claim 26 which recites
similar limitations discussed above, as well as claims 17–25 and 27–34
dependent therefrom.
§ 102 Conclusion
For the above reasons, because we are persuaded of Examiner error in
rejecting claims 16–34, we do not sustain their rejection under 35 U.S.C.
§ 102(a)(1) as being anticipated by Boswell.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed
16–34 101 Eligibility 16–34
16–34 102 Vining 16–34
Overall Outcome 16–34
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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)(1)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED