Storz Endoskop Produktions GmbH

Patent Trials and Appeals Board

Aug 3, 2020

2019001999 (P.T.A.B. Aug. 3, 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.
14/279,015 05/15/2014 Heinz-Werner Stiller 03685-P0040A 4666
154825 7590 08/03/2020
KS - Whitmyer IP Group LLC
600 Summer Street
3rd Floor
Stamford, CT 06901
EXAMINER
KOPPIKAR, VIVEK D
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
08/03/2020 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):
patent@karlstorz.com
uspto@whipgroup.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HEINZ-WERNER STILLER
and MATTEO CONTOLINI
____________

Appeal 2019-001999
Application 14/279,015
Technology Center 3600
____________

Before PHILIP J. HOFFMANN, BRUCE T. WIEDER, and
MATTHEW S. MEYERS, Administrative Patent Judges.

MEYERS, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1, 2, 4–35, and 37–43.2 We have jurisdiction
under 35 U.S.C. § 6(b). An oral hearing was held on June 25, 2020.
We AFFIRM.
CLAIMED INVENTION
Appellant’s claims “generally relate[] to interconnected medical
devices and information systems that support surgical systems and surgical
operations.” Spec. ¶ 1.
Claims 1 and 34 are the independent claims on appeal. Claim 1,
reproduced below, with bracketed matter, is illustrative of the claimed
subject matter:
1. A system for managing workflow of a medical procedure,
the system comprising:
[a] a processor;
[b] a database storing clinical information;
[c] at least one display monitor able to display the clinical
information;
[d] software executing on said processor for displaying a
subset of the clinical information on said at least one display
monitor; and

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Our decision references Appellant’s Appeal Brief (“Appeal Br.,”
filed October 18, 2018) and Reply Brief (“Reply Br.,” filed January 9,
2019), and the Examiner’s Answer (“Ans.,” mailed November 30, 2018) and
Final Office Action (“Final Act.,” mailed April 16, 2018). Appellant
identifies the real party in interest as “Storz Endoskop Produktions GmbH.”
Appeal Br. 2.
2 The Examiner indicates that “[c]laims 44–47 and 49–51 are withdrawn by
[the] Examiner.” Final Act. 2.
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[e] at least one medical device, the at least one medical
device used in the medical procedure, such that during the
medical procedure, the use of the at least one medical device at
least partially determines a stage of the medical procedure and
the subset of clinical information that is displayed on the at least
one display monitor, the subset of clinical information relevant
to the stage of the medical procedure;
[f] wherein the at least one medical device includes at least
one control, wherein the at least one control includes a user
interface that performs a different task during different stages of
a multi-stage medical procedure.

REJECTIONS
1. Claims 1, 2, 4–35, and 37–43 are rejected under 35 U.S.C.
§ 101 as directed to a judicial exception without significantly more.
2. Claims 8, 10, 12, 14, 16, 19, and 20 are rejected under 35
U.S.C. § 112(a) as failing to comply with the written description
requirement.
3. Claim 29 is rejected under 35 U.S.C. § 112(a) as failing to
comply with the enablement requirement.
4. Claims 8, 10, 12, 14, 16, 19, 20, and 29 are rejected under 35
U.S.C. § 112(b) as being indefinite for failing to particularly point out and
distinctly claim the subject matter that the inventor or a joint inventor
regards as the invention.
5. Claims 1, 2, 4–21, 24–26, 34, 35, and 37–42 are rejected under
35 U.S.C. § 102(a)(1) as being anticipated by Squilla (US 2009/0182577
A1, pub. July 16, 2009).
6. Claims 22, 23, and 43 are rejected under 35 U.S.C. § 103 as
being unpatentable over Squilla and Rosenblatt (US 2014/0204190 A1, pub.
July 24, 2014).
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7. Claims 27–33 are rejected under 35 U.S.C. § 103 as being
unpatentable over Squilla and McGreevy (US 2005/0128184 A1, pub. June
16, 2005).
ANALYSIS
Patent-Ineligible Subject Matter
Appellant argues claims 1, 2, 4–35, and 37–43 as a group. Appeal
Br. 6–11; Reply Br. 2–5. We select independent claim 1 as representative.
The remaining claims stand or fall with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(iv).
A. Section 101
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.,
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.”).
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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 waterproof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); 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
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 187; 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 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. (citation omitted)
(citing Benson and Flook); see, e.g., id. 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
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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.
B. USPTO Section 101 Guidance
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)
(“2019 Revised Guidance”).3 “All USPTO personnel are, as a matter of
internal agency management, expected to follow the guidance.” Id. at 51;
see also October 2019 Update at 1.
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

3 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).
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(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th ed.
Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).4
2019 Revised Guidance, 84 Fed. Reg. at 52–55.
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.
Step One of the Mayo/Alice Framework
With regard to the first step of the Mayo/Alice framework and
Step 2A, Prong One of the 2019 Revised Guidance, 84 Fed. Reg. at 54, the
Examiner determines that exemplary independent claim 1 broadly recites “a

4 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. 54–55. Under the 2019 Revised Guidance, “[a] claim that
integrates a judicial exception into a practical application will apply, rely on,
or use 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.” Id. at 54.
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method and systems for displaying information.” Final Act. 6. More
particularly, the Examiner characterizes claim 1 as
a system for performing the steps of: determining a medical
device used and displaying information. These steps are
directed to collecting information (e.g., determining the
medical device, determining a stage of the medical
procedure), analyzing it, and displaying certain results of the
collection and analysis (e.g., displaying information) and are
thus an abstract idea consistent with the types of ideas found to
be abstract by the courts (Electric Power Group). As such the
description of claim 1 of displaying information is an abstract
idea.
Id.
In response, Appellant argues that independent claim 1 is “not
directed to the abstract idea of ‘displaying information on a screen,’ but [is]
instead ostensibly directed to a computer system for managing workflow of
a medical procedure.” Reply Br. 4. According to Appellant, the Examiner
erred in overgeneralizing the elements recited in independent claim 1 and
“improperly reduces the claimed invention to ‘displaying information.’”
Reply Br. 2.
We are not persuaded that the Examiner erred in determining that
independent claim 1 is directed to an abstract idea. The Federal Circuit has
explained that “the ‘directed to’ inquiry applies a stage-one filter to claims,
considered in light of the specification, 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
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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 making this determination, we note that the Specification is titled
“SURGICAL WORKFLOW SUPPORT SYSTEM,” and states that the
disclosure “generally relates to interconnected medical devices and
information systems that support surgical systems and surgical operations.”
Spec. ¶ 1. According to the Specification, “[m]odern Integrated Operating
Rooms (‘IOR’) consist of interconnected medical devices and information
systems.” Id. ¶ 2. The Specification discloses that “[t]he typical IOR is a
cluttered environment that is constituted of a myriad of medical devices,
surgical instruments, monitors, touch screens, input devices (e.g.
footswitches, computer keyboards and mouse, camera head buttons, etc.),
communication systems, and so on.” Id. The Specification describes that “it
is not uncommon for a surgeon to have to operate an array of several
footswitches, each triggering individual functions on different devices in the
IOR.” Id.
The Specification identifies that “[i]t is a disadvantage of current IOR
systems that the IOR is cluttered, and the user (e.g. a surgeon) is overloaded
with information.” Id. ¶ 3. The Specification notes that “there exists a need
to provide a method and system that is able to support the workflow of a
surgery and that optimizes and improves the workflow of a medical
procedure.” Id. ¶ 5. To address this need, the present invention “provide[s]
a workflow support system that is able to automatically detect and identify
individual surgical phases and/or tasks, and to correlate relevant information
to a display to optimize and improve the workflow of a medical procedure.”
Id. ¶ 6.
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Consistent with this disclosure, independent claim 1 recites a system
for managing workflow of a medical procedure comprising “a processor,” “a
database,” “at least one display monitor,” “software executing on said
processor,” and “at least one medical device . . . wherein the at least one
medical device includes at least one control” and a “user interface.” The
system includes processes wherein “the at least one medical device at least
partially determines a stage of the medical procedure and the subset of
clinical information that is displayed on the at least one display monitor” and
the “user interface . . . performs a different task during different stages of a
multi-stage medical procedure.”
Upon reviewing the Specification and independent claim 1, as
summarized above, we agree with the Examiner that independent claim 1
recites broadly “a method and systems for displaying information” (Final
Act. 6), which can be characterized as a certain method of organizing human
activity. Here, independent claim 1 “determines a stage of the medical
procedure and the subset of clinical information that is displayed” (limitation
[e]) and then “performs a different task during different stages of a multi-
stage medical procedure” (limitation [f]). In other words, claim 1 broadly
recites a system that analyzes medical information (i.e., determines a stage
of the medical procedure and a subset of clinical information) and displays
medical information (i.e., a stage of the medical procedure and the subset of
clinical information is displayed, and a user interface that performs a
different task during different stages of a multi-stage medical procedure).
Therefore, under the 2019 Revised Guidance, independent claim 1
falls under the category of “[c]ertain methods of organizing human activity”
and more specifically “managing personal behavior or relationships or
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interactions between people (including . . . following rules or instructions).”
2019 Revised Guidance, 84 Fed. Reg. at 52. Accordingly, independent
claim 1 recites an abstract idea. See Electric Power Grp., LLC v. Alstom
S.A., 830 F.3d 1350, 1351–54 (Fed. Cir. 2016) (claim for detecting events by
receiving, detecting, analyzing, displaying, accumulating, and updating data,
and deriving a composite indicator from that data was directed to the
abstract idea of “collecting information, analyzing it, and displaying certain
results of the collection and analysis”).
Having concluded that claim 1 recites a judicial exception, i.e., an
abstract idea, we turn to Step 2A, Prong Two of the 2019 Revised Guidance
and determine whether the claim integrates the recited judicial exception
into a practical application of the judicial exception. Here we look to see if,
for example, any additional elements of the claim (i) reflect an improvement
in the functioning of a computer or to another technological field, (ii)
implement the judicial exception with, or by use of, a particular machine,
(iii) effect a transformation or reduction of a particular article to a different
state or thing, or (iv) use the judicial exception in some other meaningful
way beyond generally linking the use of the judicial exception to a particular
technological environment. See 2019 Revised Guidance, 84 Fed. Reg. at 55;
see also MPEP §§ 2106.05(a)–(c), (e)–(h).
Here, the additional elements recited in claim 1 beyond the abstract
idea are “a processor,” “a database,” “at least one display,” “software
executing on said processor for displaying,” and “at least one medical
device,” i.e., “at least one control,” including a “user interface.” However,
these additional elements are described generically in the Specification (see,
e.g., Spec. ¶¶ 94–95, 97–103, 105–106, 117, and 160–168). We find no
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indication in the Specification, nor does Appellant direct us to any
indication, that the limitations recited in claim 1 invoke any assertedly
inventive programming, require any specialized computer hardware or other
inventive computer components, i.e., a particular machine, or that the
claimed invention is implemented using other than generic computer
components to perform generic computer functions. See DDR Holdings,
LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[A]fter
Alice, there can remain no doubt: recitation of generic computer limitations
does not make an otherwise ineligible claim patent-eligible.”).
We also find no indication in the Specification that the claimed
invention effects a transformation or reduction of a particular article to a
different state or thing. Nor do we find anything of record that attributes an
improvement in computer technology and/or functionality to the claimed
invention or that otherwise indicates that the claimed invention integrates the
abstract idea into a “practical application,” as that phrase is used in the
2019 Revised Guidance.
Appellant argues that independent claim 1 “is a technological
improvement in a technological field.” Reply Br. 5. Appellant attributes
this purported technical improvement to each of the elements recited by
independent claim 1, which together “improve[] on the prior art by
customizing medical device control based on the task at hand to decrease the
number of control devices in an operating room, as well as providing the
surgeon only with the required information for the specific task at hand.” Id.
(citing Spec. ¶¶ 4, 18).
Appellant’s argument is not persuasive. Here, the focus of
independent claim 1 is not on any technological advancement, but rather on
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the implementation of the abstract idea, “for which computers are invoked
merely as a tool.” See Enfish, 822 F.3d at 1336. In this regard, the
Specification discloses that “processor 100 may be any device, system or
part thereof that controls at least one operation and/or executes software
applications or machine-readable instructions” (Spec. ¶ 97), and “the
medical device may consist of medical devices such as a laryngoscope,
endoscope, scalpel, intubation tube, stent, and/or other such medical devices
that a user (such as a surgeon or nurse) may use during a medical
procedure.” Id. ¶ 105.
Independent claim 1, unlike the claims found non-abstract in prior
cases, uses generic computer technology to analyze and display medical
information, and does not recite an improvement to a particular computer
technology. See 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”).
Appellant also argues that “[t]he claims require a particularly
programmed machine” that “requires particular structure.” Appeal Br. 9.
To support its argument, Appellant relies on the line of reasoning articulated
in In re Alappat, 33 F.3d 1526, 1543 (Fed. Cir. 1994), i.e., that a general
purpose computer becomes a “special purpose computer” once programmed
to perform particular functions. Appeal Br. 8. However, simply
programming a general-purpose computer to perform an abstract idea does
not provide an “inventive concept” such that the claim amounts to
significantly more than that abstract idea. See Alice, 573 U.S. at 221–27
(applying an abstract idea, such as an algorithm, on a general purpose
computer is not enough to transform a patent-ineligible abstract idea into a
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patent-eligible invention); EON Corp. IP Holdings LLC v. AT&T Mobility
LLC, 785 F.3d 616, 623 (Fed. Cir. 2015) (“A general purpose computer is
flexible—it can do anything it is programmed to do.”).
Having determined under step one of the Mayo/Alice framework that
claim 1 is directed to an abstract idea, we next consider under Step 2B of the
2019 Revised Guidance, the second step of the Mayo/Alice framework,
whether claim 1 includes additional elements or a combination of elements
that provides an “inventive concept,” i.e., whether the additional elements
amount to “significantly more” than the judicial exception itself.
2019 Revised Guidance, 84 Fed. Reg. at 56.
Appellant argues that the Examiner “has failed its duty to consider the
limitations as an ordered combination.” Reply Br. 5; see also Appeal Br. 11.
However, “the relevant inquiry is not whether the claimed invention as a
whole is unconventional or non-routine.” BSG Tech LLC v. BuySeasons,
Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018). Instead, the question is whether
the claim includes additional elements, i.e., elements other than the abstract
idea itself, that “‘transform the nature of the claim’ into a patent-eligible
application.” Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S. at 79, 78).
Here, the Examiner determined that the “additional elements are not
significantly more than the judicial exception because the additional
elements when considered both individually and as an ordered combination
do not amount to significantly more than the abstract idea.” Final Act. 6.
More particularly, the Examiner finds that
[t]he computer is recited at a high level of generality and recited
as performing generic computer functions routinely used in
computer applications such as displaying. Generic computer
components recited as performing generic computer functions
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that are well-understood, routine, and conventional activities
amount to no more than implementing the abstract idea with a
computerized system. Thus taken alone or in an ordered
combination, the additional limitations do not present
significantly more than an abstract idea.
Id.
We agree with the Examiner that the steps performed by these
components are well-understood, routine, or conventional. As discussed
above, there is nothing in the Specification to indicate that the limitations
recited in claim 1 require any specialized hardware or inventive computer
components, or that the claimed invention is implemented using anything
other than generic computer components to perform generic computer
functions, e.g., analyzing and displaying medical information.
Viewed as a whole, independent claim 1 simply recites a series of
limitations instructing how to determine and present medical information.
See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014)
(“[T]he claimed sequence of steps comprises only ‘conventional steps,
specified at a high level of generality,’ which is insufficient to supply an
‘inventive concept.’” (citing Alice, 573 U.S. at 222)). Here, independent
claim 1 does not, for example, purport to improve the functioning of the
computer itself. Nor does it effect an improvement in any other technology
or technical field, as discussed above with respect to prong two of Step 2A.
Instead, independent claim 1 amounts to nothing significantly more than an
instruction to apply the abstract idea using generic computing elements,
which, under our precedents, is not enough to transform an abstract idea into
a patent-eligible invention. See Alice, 573 U.S. at 226.
We also are not persuaded of Examiner error to the extent Appellant
maintains that independent claim 1 is patent eligible because there is no risk
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of preemption. Appeal Br. 9–10; Reply Br. 3–4. Although the Supreme
Court has described “the concern that drives [the exclusion of abstract ideas
from patent-eligible subject matter] as one of pre-emption,” Alice, 573 U.S.
at 216, characterizing preemption as a driving concern for patent eligibility
is not the same as characterizing preemption as the sole test for patent
eligibility. “The Supreme Court has made clear that the principle of
preemption is the basis for the judicial exceptions to patentability” and “[f]or
this reason, questions on preemption are inherent in and resolved by the
§ 101 analysis.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1379 (Fed. Cir. 2015) (citing Alice, 573 U.S. at 216). “[P]reemption may
signal patent ineligible subject matter, [but] the absence of complete
preemption does not demonstrate patent eligibility.” Id.
Appellant’s other arguments, including those directed to now-
superseded USPTO guidance, have been considered but are not persuasive
of error. See 2019 Revised Guidance, 84 Fed. Reg. at 51 (“Eligibility-
related guidance issued prior to the Ninth Edition, R-08.2017, of the MPEP
(published Jan. 2018) should not be relied upon.”).
We are not persuaded, on the present record, that the Examiner erred
in rejecting independent claim 1 under 35 U.S.C. § 101. Therefore, we
sustain the Examiner’s rejection of independent claim 1, and independent
claim 34, which falls with independent claim 1.
We also are not persuaded, on the present record, that the Examiner
erred in rejecting dependent claims 2, 4–33, 35, and 37–43. With respect to
dependent claims 2, 4–33, 35, and 37–43, Appellant asserts that “the Office
Action’s failure to even list the limitations of the dependent claims, much
less analyze them, is fatal to the rejection.” Appeal Br. 10 (emphasis
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omitted). However, we find that the argued dependent claims merely
describe further characteristics of the underlying concept and lack additional
elements that would render the claims patent-eligible. And, in the absence
of any substantive arguments in support of the separate patent eligibility of
the dependent claims, we agree with the Examiner that the dependent claims
are also directed to an abstract idea and fail to transform the abstract idea
into something patent-eligible. See Final Act. 7. Therefore, we similarly
sustain the Examiner’s rejection of dependent claims 2, 4–35, and 37–43 for
the reasons discussed with respect to independent claim 1.
Written Description
Claims 8, 10, 14, and 16
We are persuaded that the Examiner erred in rejecting claims 8, 10,
14, and 16 under 35 U.S.C. § 112(a), as failing to comply with the written
description requirement. See Appeal Br. 11 (“[T]he Office Action does not
supply any rejection for these claims.”); cf. Ans. 4–5. Accordingly, we do
not sustain the rejection of claims 8, 10, 14, and 16 under 35 U.S.C.
§ 112(a), as failing to comply with the written description requirement.
Claim 12
We are persuaded that the Examiner erred in rejecting dependent
claim 12 under 35 U.S.C. § 112(a), as failing to comply with the written
description requirement. The Examiner determined that there is no written
description support in the Specification for “wherein the risk level is
expressed as a continuum between a minimum and a maximum value, so
that [the] rules with high risk level are only updated after a large set of usage
data showing a consistent usage pattern is collected,” as recited by claim 12.
Final Act. 3. According to the Examiner “[i]t is not disclosed how to
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determine whether a set of usage data is large enough to be used. Further,
no algorithm is given for how a set of usage data would be used to update
rules.” Id.
Appellant maintains that the rejection is improper and asserts that the
features of claim 12 are clearly supported by and consistent with the
Specification. Appeal Br. 11–12 (citing Spec. ¶ 28).
Whether a Specification complies with the written description
requirement of 35 U.S.C. § 112(a) is a question of fact and is assessed on a
case-by-case basis. See, e.g., Purdue Pharma L.P. v. Faulding, Inc., 230
F.3d 1320, 1323 (Fed. Cir. 2000) (citing Vas-Cath Inc. v. Mahurkar, 935
F.2d 1555, 1561 (Fed. Cir. 1991)). The disclosure, as originally filed, need
not literally describe the claimed subject matter (i.e., using the same terms or
in haec verba) in order to satisfy the written description requirement. But
the Specification must convey with reasonable clarity to those skilled in the
art that, as of the filing date, the inventor was in possession of the claimed
invention. See id.
Here, the Specification discloses that
[t]he risk level is expressed as a continuum between a minimum
and a maximum value, so that rules with progressively higher
risk level are only updated after a progressively larger set of
usage data showing a consistent usage pattern is collected. In
this manner, the system is intelligent and updates according to
the usage pattern and level of risk. In certain embodiments, the
risk is determined by a surgeon on a scale of one to ten.
Spec. ¶ 29. The Specification further sets forth that
[t]he rules (or subset of clinical information to display) are not
only updated when a specific request is issued by the user. The
machine learning module may also collect usage statistic and
events when a user overrides the default behavior provided by a
rule or set of rules. Periodically, the rules are updated in such a
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way that if a consistent pattern of “overrides” is seen for a
particular rule in a particular context (or by a particular user),
then the rule is updated to reflect the new usage pattern in that
context (or for that user).
Id. ¶ 108. In expressly disclosing an exemplary process in which rules are
only updated based on a consistent pattern, Appellant’s disclosure sets forth
the process used to update rules with high risk levels with sufficient
particularity. Thus, we agree with Appellant that a person of ordinary skill
in the art would reasonably understand from the Specification, as originally
filed, that the Specification provides support for the argued limitation at the
time the application was filed.
Therefore, we do not sustain the Examiner’s rejection of dependent
claim 12 under 35 U.S.C. § 112(a), as failing to comply with the written
description requirement.
Claim 19
We are persuaded that the Examiner erred in rejecting dependent
claim 19 under 35 U.S.C. § 112(a), as failing to comply with the written
description requirement. The Examiner determined that there is no written
description support in the Specification for “wherein the image recognition
module is augmented by speech recognition and/or gesture control.” Final
Act. 3. More particularly, the Examiner finds that “[n]o disclosure is given
for how an image recognition module is augmented by speech recognition or
gesture control.” Id.
Appellant maintains that the rejection is improper and asserts that the
features of claim 19 are clearly supported by and consistent with the
Specification. Appeal Br. 12 (citing Spec. ¶ 44).
As summarized above, the disclosure, as originally filed, need not
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literally describe the claimed subject matter (i.e., using the same terms or in
haec verba) in order to satisfy the written description requirement. But the
Specification must convey with reasonable clarity to those skilled in the art
that, as of the filing date, the inventor was in possession of the claimed
invention. See, e.g., Purdue Pharma L.P., 230 F.3d at 1323.
Here, the Specification expressly discloses that
[t]he image recognition module is augmented by speech
recognition and/or gesture control and/or an input device. In
certain embodiments, the image recognition module is able to
learn the visual features of previously unseen medical devices
and/or gestures.
Spec. ¶ 44. The Specification further sets forth that
[i]n certain embodiments, the machine learning module is
combined with the image recognition and voice recognition
modules to further improve the capabilities of the surgical
workflow support system. For example, if a new type of surgical
instrument (e.g., a new scalpel) is developed after the surgical
workflow support system is deployed, the image recognition
module itself may not be able to recognize the new, never seen
before, instrument. However, the system is able to correlate
different types of information and instruct the image recognition
module to learn the visual features of the new surgical system.
For example, the surgical procedure requires use of a scalpel, the
identified surgical phase indicates that incision is imminent, and
the voice recognition module recognizes that the surgeon has
asked the nurse to hand over the new scalpel. If the image
recognition module does not positively identify the new scalpel,
the system instructs it to construct a new visual model of the
previously unseen scalpel. In other embodiments, the system
applies algorithms similar to the one described above to learn
new gestures and/or gesture commands.
Id. ¶ 143. In expressly disclosing an exemplary process in which the
machine learning module is combined with the image recognition and voice
recognition modules and/or applied to gesture learning in order to learn the
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visual features of a new surgical system, Appellant’s disclosure sets forth a
process used to augment the imagine recognition module by speech
recognition and/or gesture control. Thus, we agree with Appellant that a
person of ordinary skill in the art would reasonably understand from the
Specification, as originally filed, that the Specification provides support for
the argued limitation at the time the application was filed.
Therefore, we do not sustain the Examiner’s rejection of dependent
claim 19 under 35 U.S.C. § 112(a).
Claim 20
We are persuaded that the Examiner erred in rejecting dependent
claim 20 under 35 U.S.C. § 112(a), as failing to comply with the written
description requirement. The Examiner determined that there is no written
description support in the Specification for “wherein the image recognition
module is able to learn the visual features of previously unseen medical
devices and/or gestures.” Final Act. 3. More particularly, the Examiner
finds that
[n]o algorithm is given for how the image recognition module
would be able to determine previously unseen medical devices
or gestures. For example, when training artificial intelligence a
training set is typically used in which humans manually identify
features and feed this data to a machine learning system. There
is no such disclosure of a training set in the instant application
and it raises questions of possession.
Id. at 3–4.
Appellant maintains that the rejection is improper and asserts that the
features of claim 20 are clearly supported by and consistent with the
Specification. Appeal Br. 12.
As summarized above, the disclosure, as originally filed, need not
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literally describe the claimed subject matter (i.e., using the same terms or in
haec verba) in order to satisfy the written description requirement. But the
Specification must convey with reasonable clarity to those skilled in the art
that, as of the filing date, the inventor was in possession of the claimed
invention. See, e.g., Purdue Pharma L.P., 230 F.3d at 1323.
Here, the Specification expressly discloses that
[i]n certain embodiments, the machine learning module is
combined with the image recognition and voice recognition
modules to further improve the capabilities of the surgical
workflow support system. For example, if a new type of surgical
instrument (e.g., a new scalpel) is developed after the surgical
workflow support system is deployed, the image recognition
module itself may not be able to recognize the new, never seen
before, instrument. However, the system is able to correlate
different types of information and instruct the image recognition
module to learn the visual features of the new surgical system.
For example, the surgical procedure requires use of a scalpel, the
identified surgical phase indicates that incision is imminent, and
the voice recognition module recognizes that the surgeon has
asked the nurse to hand over the new scalpel. If the image
recognition module does not positively identify the new scalpel,
the system instructs it to construct a new visual model of the
previously unseen scalpel. In other embodiments, the system
applies algorithms similar to the one described above to learn
new gestures and/or gesture commands.
Spec. ¶ 143. In expressly disclosing an exemplary process in which the
machine learning module is combined with the image recognition and voice
recognition modules and/or applied to gesture learning in order to learn the
visual features of a new surgical system, Appellant’s disclosure sets forth a
process by which the image recognition module learns visual features of
previously unseen medical devices and/or gestures. Thus, we agree with
Appellant that a person of ordinary skill in the art would reasonably
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understand from the Specification, as originally filed, that the Specification
provides support for the argued limitation at the time the application was
filed.
Therefore, we do not sustain the Examiner’s rejection of dependent
claim 20 under 35 U.S.C. § 112(a).
Enablement
Claim 29
We are persuaded that the Examiner erred in rejecting claim 29 under
35 U.S.C. § 112(a), as failing to comply with the enablement requirement.
The Examiner determined that the Specification “does not reasonably
provide enablement for every possible method for monitoring progress of a
medical procedure.” Final Act. 4. More particularly, the Examiner finds
that
[t]he claim and disclosure recites all possible methods of
monitoring progress of a medical procedure. The state of the
prior art shows that only particular devices or methods such as
image recognition are used to monitor progress. One of ordinary
skill in the art would not recognize that all methods are enabled
and the level of predictability in the art allows for generic
computer functions, but not advanced functions as claimed.
There is minimal discussion in the disclosure of what is a
controller and much experimentation would be needed to create
a controller that monitors progress of any medical procedure
using any input method.
Id.
Appellant maintains that the rejection is improper and asserts that
“one skilled in the art [would] readily appreciate[] what has been claimed.”
Appeal Br. 14.
The test for compliance with the enablement requirement is whether
the disclosure, as filed, is sufficiently complete to enable a person of
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ordinary skill in the art to make and use the claimed invention without undue
experimentation. In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). Thus,
when rejecting a claim for lack of enablement, the Examiner bears the initial
burden of setting forth a reasonable explanation of why the scope of the
claim is not adequately enabled by the description provided in the
Specification. In re Wright, 999 F.2d 1557, 1561–62 (Fed. Cir. 1993).
Factors that may be considered in determining whether a disclosure would
require undue experimentation include (1) the quantity of experimentation
necessary, (2) the amount of direction or guidance presented, (3) the
presence or absence of working examples, (4) the nature of the invention, (5)
the state of the prior art, (6) the relative skill of those in the art, (7) the
predictability or unpredictability of the art, and (8) the breadth of the claims.
See Wands, 858 F.2d at 737.
Here, the Examiner has not set forth a reasonable explanation of why
the scope of the claim is not adequately enabled by the description provided
in the Specification. Specifically, the Examiner’s contention that “[t]he
claim . . . recites all possible methods of monitoring progress of a medical
procedure” (Final Act. 4) is erroneous at least because the scope of claim 29
does not encompass all possible methods of monitoring progress of a
medical procedure. Instead, the scope of claim 29 is limited to a “controller
being used to monitor the progress of the medical procedure” (Appeal
Br. 27, Claims App. (emphasis added)), and the Examiner acknowledges
that the Specification is “enabling for a controller used to monitor progress
of a medical procedure.” Final Act. 4.
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Therefore, the Examiner has failed to establish a prima facie case of
non-enablement, and we do not sustain the Examiner’s rejection of claim 29
under 35 U.S.C. § 112(a).
Indefiniteness
Claims 8, 10, 14, 16, and 29
We are persuaded that the Examiner erred in rejecting claims 8, 10,
14, 16, and 29 under 35 U.S.C. § 112(b), as being indefinite for failing to
particularly point out and distinctly claim the subject matter which the
inventor or a joint inventor regards as the invention. As noted by Appellant,
the Final Office Action “does not supply any rejection” for claims 8, 10, 14,
and 16 under 35 U.S.C. § 112(b). Appeal Br. 15; Reply Br. 9. Similarly, we
note that the Final Office Action does not provide a rejection of claim 29
under 35 U.S.C. § 112(b).
Accordingly, we do not sustain the rejection of dependent claims 8,
10, 14, 16, and 29 under 35 U.S.C. § 112(b).
Claim 12
In rejecting dependent claim 12, the Examiner takes the position that
the term “large” is a relative term rendering the claim indefinite. Final
Act. 5. More particularly, the Examiner asserts that “[t]he term ‘large’ is not
defined by the claim, the [S]pecification does not provide a standard for
ascertaining the requisite degree, and one of ordinary skill in the art would
not be reasonably apprised of the scope of the invention.” Id.
Appellant maintains that the rejection is improper, and asserts “that
the language of the claims particularly points out and distinctly claims the
subject matter which Applicant regards as the invention and requests that the
rejections be withdrawn.” Appeal Br. 16.
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We agree with Appellant. “[A] claim is indefinite when it contains
words or phrases whose meaning is unclear,” i.e., “ambiguous, vague,
incoherent, opaque, or otherwise unclear in describing and defining the
claimed invention.” In re Packard, 751 F.3d 1307, 1310–13 (Fed. Cir.
2014); see also In re McAward, No. 2015-006416, 2017 WL 3669566, at *3
(PTAB Aug. 25, 2017) (precedential). Here, even though the claimed term
“large” might vary, we find this variance indicative of the breadth of the
claim language, and not indefiniteness. In this regard, the Specification
discloses “that rules with progressively higher risk level are only updated
after a progressively larger set of usage data showing a consistent usage
pattern is collected.” Spec. ¶ 29; see also id. ¶ 108. Thus, in light of the
Specification, one of ordinary skill in the art would understand “large,” as
recited in dependent claim 12, to indicate “a set of usage data” large enough
to show a pattern.
Therefore, we do not sustain the Examiner’s rejection of dependent
claim 12 under 35 U.S.C. § 112(b).
Claim 19
We are persuaded that the Examiner erred in rejecting dependent
claim 19 under 35 U.S.C. § 112(b), as being indefinite for failing to
particularly point out and distinctly claim the subject matter which the
inventor or a joint inventor regards as the invention.
In rejecting claim 19 under 35 U.S.C. § 112(b), the Examiner
determined that the claim is indefinite because “[i]t is unclear what is meant
by ‘augment.’” Final Act. 5. We disagree.
In determining whether a claim is definite under 35 U.S.C. § 112,
“[t]he USPTO, in examining an application, is obliged to test the claims for
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reasonable precision.” Packard, 751 F.3d at 1313. The Office “determines
the scope of claims . . . not solely on the basis of the claim language, but
upon giving claims their broadest reasonable construction ‘in light of the
specification as it would be interpreted by one of ordinary skill in the art.’”
Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc)
(quoting In re Am. Acad. Of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004)).
Although the Specification does not define the term “augmented,” we
find its ordinary dictionary definition to mean “supplement.”5 In our view, a
person of ordinary skill in the art would understand from the Specification
(including the claim language) what is being claimed, namely that the term
“augmented,” as recited in claim 19, indicates that the image recognition
module is supplemented by speech recognition and/or gesture control.
Therefore, we do not sustain the Examiner’s rejection of dependent
claim 19 under 35 U.S.C. § 112(b).
Claim 20
We are persuaded that the Examiner erred in rejecting dependent
claim 20 under 35 U.S.C. § 112(b), as being indefinite for failing to
particularly point out and distinctly claim the subject matter which the
inventor or a joint inventor regards as the invention.
In rejecting claim 20 under 35 U.S.C. § 112(b), the Examiner
determined that the claim is indefinite because “[i]t is unclear what would be

5 Merriam Webster Dictionary, https://www.merriam-
webster.com/dictionary/augment (last viewed July 27, 2020).
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considered ‘previously unseen’ in the context of the invention.” Final
Act. 5. We disagree.
As summarized above, the Office “determines the scope of claims . . .
not solely on the basis of the claim language, but upon giving claims their
broadest reasonable construction ‘in light of the specification as it would be
interpreted by one of ordinary skill in the art.’” Phillips, 415 F.3d at 1316.
With respect to claim 20, the Specification indicates that medical
devices are previously unseen when “the image recognition module does not
positively identify the” medical device. Spec. ¶ 143. In our view, a person
of ordinary skill in the art would understand from the Specification
(including the claim language) what is being claimed, namely that the term
“previously unseen,” as recited in claim 20, indicates that previously unseen
medical devices and/or gestures are those medical devices and/or gestures
that previously could not be positively identified by the image recognition
module.
Therefore, we do not sustain the Examiner’s rejection of dependent
claim 20 under 35 U.S.C. § 112(b).
Anticipation
Claims 1–2, 4–21, 24–26, 34, 35, and 37–42
We are persuaded by Appellant’s argument that the Examiner erred in
rejecting independent claims 1 and 34 under 35 U.S.C. § 102(a)(1) because
Squilla does not disclose “the use of the at least one medical device at least
partially determines . . . the subset of clinical information that is displayed
on the at least one display monitor,” as recited by limitation [e] of
independent claim 1, and similarly recited by independent claim 34. Appeal
Br. 18–19; Reply Br. 8.
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In rejecting independent claim 1, the Examiner finds that Squilla
teaches “the use of the at least one medical device at least partially
determines a stage of the medical procedure and the subset of clinical
information that is displayed on the at least one display monitor.” Final
Act. 8–9 (citing Squilla ¶¶ 52–53, 98); see also Ans. 5 (citing Squilla ¶¶ 29,
52–53, 98). However, we agree with Appellant that there is nothing in the
cited portions of Squilla that discloses the argued limitation.
In this regard, we note that Squilla is directed to “an automated
healthcare facility workflow process and, in particular, to an automated
healthcare facility workflow process utilizing aspects of artificial
intelligence.” Squilla ¶ 1. In one embodiment, Squilla “includes creating a
rule set governing at least one of a collection phase, an organize phase, and a
display phase of the healthcare facility workflow process.” Id. ¶ 5. Squilla
sets forth that a plurality of content is automatically processed based on the
rule set, and discloses that
processing the plurality of content includes one of collecting the
plurality of content from a plurality of heterogeneous content
sources, organizing the plurality of content based on a desired
content hierarchy, and displaying at least one content of the
plurality of content based on the desired content hierarchy.
Id. And, with respect to displaying content, Squilla discloses that “[t]he
display device 24 can also display surgical sequence phase indicators 94
representing each phase of the surgical sequence and can further display one
or more status indicators representing which phase in the surgical sequence
is currently being displayed” and “the user may toggle between any of the
phases of the surgical sequence by activating and/or otherwise selecting the
desired surgical sequence phase indicator.” Id. ¶¶ 52–53. Squilla also
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discloses that newly captured or collected content may be displayed or
stored according to preferences in the rule set. Id. ¶ 98.
We have reviewed the cited portions of Squilla on which the
Examiner relies, and we find no disclosure there that selecting a surgical
sequence phase indicator to display associated phase information is
equivalent to functionality disclosing that “use of the at least one medical
device at least partially determines . . . the subset of clinical information that
is displayed on the at least one display monitor,” as recited by limitation [e]
of independent claim 1, and similarly recited by independent claim 34. In
making this determination, we note that independent claim 1 requires “use of
the at least one medical device at least partially determines . . . the subset of
clinical information that is displayed on the at least one display monitor.”
Appeal Br. 21, Claims App. We further note that Appellant’s Specification
indicates
that movement or use of the at least one medical device controls
the subset of clinical information that is displayed on the at least
one display monitor, as the processor communicates with the
display to provide the appropriate information on the display.
For example, if an endoscope is picked up, than a certain subset
of information is displayed on the display.
Spec. ¶ 19. The Specification further clarifies that “[t]he system is able to
understand the workflow of the surgery based upon the medical device(s)
being used in the surgery, and thus . . . control the information shown on the
display during a particular phase of the surgical workflow.” Id. ¶ 93.
In this context, although we agree with the Examiner that the cited
portions of Squilla disclose a display device that can display surgical
sequence phase indicators (Squilla ¶ 52), toggle between phases of the
surgical sequence by activating or selecting the desired phase indicator (id.
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¶ 53), and display content according to preferences in the rule set (id. ¶ 98),
Squilla does not disclose that “use of the at least one medical device at least
partially determines . . . the subset of clinical information that is displayed
on the at least one display monitor,” as required by independent claims 1
and 34. Instead, the cited portions of Squilla indicate that content is
displayed either in response to the user determining the displayed
information by selecting the desired phase indicator, or according to
preferences in the rule set.
To the extent the Examiner’s rejection is based on the view that
Squilla inherently discloses the claim limitation (i.e., because “a user of
Squilla can configure the control at each stage to display content in any
desirable way” (Final Act. 8–9; see also Ans. 5)), more than mere
speculation is required. In particular, the Examiner must provide evidence
and/or technical reasoning, which is not present here, that make “clear that
the missing descriptive matter is necessarily present in the thing described in
the reference, and that it would be so recognized by persons of ordinary
skill.” Continental Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1268
(Fed. Cir. 1991). “Inherency . . . may not be established by probabilities or
possibilities. The mere fact that a certain thing may result from a given set
of circumstances is not sufficient.” Id. at 1269 (quoting In re Oelrich, 666
F.2d 578, 581 (CCPA 1981)).
In view of the foregoing, we do not sustain the Examiner’s rejection
of independent claims 1 and 34 under 35 U.S.C. § 102(a)(1) as anticipated
by Squilla. For the same reasons, we also do not sustain the Examiner’s
rejection of dependent claims 2, 4–21, 24–26, 35, and 37–42 as anticipated
by Squilla.
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Obviousness
The Rejection of Claims 22, 23, and 43 under 35 U.S.C. § 103 as
unpatentable over Squilla and Rosenblatt
Each of claims 22, 23, and 43 depends, directly or indirectly, from
independent claims 1 and 34. The rejection of these dependent claims under
35 U.S.C. § 103(a) does not cure the deficiencies in the corresponding
anticipation rejections of claims 1 and 34. Therefore, we do not sustain the
Examiner’s rejection of dependent claims 22, 23, and 43 under 35 U.S.C.
§ 103(a) for the same reasons as set forth above with respect to independent
claims 1 and 34.
The Rejection of Claims 27–33 under 35 U.S.C. § 103 as unpatentable
over Squilla and McGreevy
Each of claims 27–33 depends, directly or indirectly, from
independent claim 1. The rejection of these dependent claims under 35
U.S.C. § 103(a) does not cure the deficiencies in the corresponding
anticipation rejection of claim 1. Therefore, we do not sustain the
Examiner’s rejection of dependent claims 27–33 under 35 U.S.C. § 103(a)
for the same reasons as set forth above with respect to independent claim 1.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 4–35,
37–43
101 Eligibility 1, 2, 4–35,
37–43

8, 10, 12,
14, 16, 19–
20
112(a) Written
Description
8, 10, 12,
14, 16,
19–20
29 112(a) Enablement 29
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Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
8, 10, 12,
14, 16, 19–
20, 29
112(b) Indefiniteness 8, 10, 12,
14, 16,
19–20, 29
1, 2, 4–21,
24–26, 34,
35, 37–42
102(a)(1) Squilla 1, 2, 4–21,
24–26, 34,
35, 37–42
22, 23, 43 103 Squilla, Rosenblatt 22, 23, 43
27–33 103 Squilla, McGreevy 27–33
Overall
Outcome
1, 2, 4–35,
37–43

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