Stryker Corporation

UNITED STATES PATENT AND TRADEMARK OFFICE

UNITED STATES DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

Address: COMMISSIONER FOR PATENTS P.O. Box 1450

Alexandria, Virginia 22313-1450 www.uspto.gov

APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.

16/390,351 04/22/2019 David Holscher 22-1775-US 7749

156737 7590 04/03/2025 EXAMINER

MBHB - Stryker/Medical

Suite 3100

FURTADO, WINSTON RAHUL

Chicago, IL 60606

ART UNIT PAPER NUMBER

3687

NOTIFICATION DATE DELIVERY MODE

04/03/2025 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):

docketing@mbhb.com

PTOL-90A (Rev. 04/07)

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UNITED STATES PATENT AND TRADEMARK OFFICE

____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD

____________

Ex parte DAVID HOLSCHER, JUSTIN BAYS, and

ARUN MIRCHANDANI

____________ Appeal 2024-002287 Application 16/390,351 Technology Center 3600 ____________

Before MARC S. HOFF, CATHERINE SHIANG, and BACH V. HOANG, Administrative Patent Judges. SHIANG, Administrative Patent Judge.

DECISION ON APPEAL

Appellant¹appeals under 35 U.S.C. § 134(a) from the Examiner's rejection of claims 35, 38-45, 48-55, and 58-63, which are all the claims pending and rejected in the application. Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b).

We AFFIRM.

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Appeal 2024-002287 Application 16/390,351

STATEMENT OF THE CASE

Introduction

The claimed invention relates to "providing context information with a communication request." Title (capitalization omitted). In particular, [e]mbodiments include methods, devices, systems, and non- transitory process-readable storage media for providing incoming call context information to a communication device in a medical communication system. Some embodiments may include receiving, by a server device, clinical information in one or more information feeds from one or more other devices, determining, by the server device, whether a communication request from a first communication device for a second communication device has been received, and sending, by the server device, to the second communication device a communication request message including call context information that is drawn from the clinical information. Call context information includes patient and clinical information to enable a recipient to understand the nature and urgency of a call before answering.

Abstr. Independent claim 35 is exemplary:

35. A method for setup of a voice call between a first device and a second device, the method comprising:

receiving into a server, from the first device, a first call- request message requesting setup of the voice call between the first device and the second device, wherein the first call-request message is associated with a patient event;

engaging by the server in call-setup signaling with the first device and with the second device, to set up the requested voice call between the first device and the second device, responsive to receiving into the server the first call-request message requesting setup of the voice call between the first device and the second device, wherein engaging in the call- setup signaling includes (i) transmitting from the server to the second device a second call-request message requesting setup of the voice call, (ii) receiving by the server from the second

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Appeal 2024-002287 Application 16/390,351 device an acceptance of the second call-request message, and

(iii) then sending further signaling from the server to the first device and the second device to complete setup of the call between the first device and the second device; determining by the server clinical information based on an identifier of the patient event with which the first call- request is associated; and

based on the determining, providing by the server to the second device the determined clinical information along with the second call-request message to the second device, to enable the second device to present the determined clinical information as a supplement to caller-identification information for the voice call between the first device and the second device, wherein providing the determined clinical information along with the second call-request message to the second device comprises providing the determined clinical information and second call-request message in a single signal. Appeal Br. 20-21 (Claims App.).

References and Rejections²

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Appeal 2024-002287 Application 16/390,351

ANALYSIS

35 U.S.C. § 101 Section 101 of the Patent Act provides "[w]hoever 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." 35 U.S.C. § 101 (2021). However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit exceptions: "[l]aws of nature, natural phenomena, and abstract ideas" are not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 216 (2014) (internal quotation marks and citation omitted).

In determining whether a claim falls within an excluded category, we are guided by the Supreme Court's two-step framework, described in Mayo and Alice. Id. at 217-18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework, we first determine what concept the claim is "directed to." See Alice, 573 U.S. at 219 ("On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk."); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) ("Claims 1 and 4 in petitioners' application explain the basic concept of hedging, or protecting against risk.").

Concepts determined to be abstract ideas, and, thus, patent ineligible, include certain methods of organizing human activity, such as fundamental economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594-95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts

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Appeal 2024-002287 Application 16/390,351 determined to be patent eligible include physical and chemical processes, such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 191 (1981)); "tanning, dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. (15 How.) 252, 267-68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). In Diehr, the claim at issue recited a mathematical formula, but the Supreme Court held that "[a] claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula." Diehr, 450 U.S. at 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 Supreme Court also indicated that a claim "seeking patent protection for that formula in the abstract . . . is not accorded the protection of our patent laws, . . . and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment." Id. (citing Benson and Flook); see, e.g., 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 elements of the claim to determine whether it contains an 'inventive concept' sufficient to 'transform' the claimed abstract idea into a patent-eligible application." Alice, 573 U.S. at 221 (citation omitted). "A claim that recites an abstract idea must include 'additional features' to

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Appeal 2024-002287 Application 16/390,351 ensure 'that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].'" Id. (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. The United States Patent and Trademark Office published revised guidance on the application of § 101. USPTO, 2019 REVISED PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50 (Jan. 7, 2019) ("Guidance").³ Under the Guidance, we first look to whether the claim recites:

(1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, or mental processes) (Step 2A, Prong 1); and

(2) additional elements that integrate the judicial exception into a practical application (see Manual of Patent Examining Procedure ("MPEP") § 2106.05(a)-(c), (e)-(h)) (9th ed. rev. 01.2024, Nov. 2024) (Step 2A, Prong 2).

Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look to whether the claim:

(3) adds a specific limitation beyond the judicial exception that is not "well-understood, routine, conventional" in the field (see MPEP § 2106.05(d)); or

(4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. (Step 2B.) See Guidance, 84 Fed. Reg. at 54-56.

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Appeal 2024-002287 Application 16/390,351 Claims 35, 38-45, 48-55, and 58-63 On this record, we determine that the Examiner did not err in rejecting claim 35.

We have reviewed and considered Appellant's arguments, but such arguments are unpersuasive. To the extent consistent with our analysis below, we adopt the Examiner's findings and conclusions in (i) the office action from which this appeal is taken and (ii) the Answer. Step 2A, Prong 1 of the Guidance

Turning to Step 2A, Prong 1 of the Guidance, claim 35 (with emphases added) recites:⁴

35. A method for setup of a voice call between a first device and a second device, the method comprising:

receiving into a server, from the first device, a first call-request message requesting setup of the voice call between the first device and the second device, wherein the first call-request message is associated with a patient event;

engaging by the server in call-setup signaling with the first device and with the second device, to set up the requested voice call between the first device and the second device, responsive to receiving into the server the first call-request message requesting setup of the voice call between the first device and the second device, wherein engaging in the call-setup signaling includes (i) transmitting from the server to the second device a second call-request message requesting setup of the voice call, (ii) receiving by the server from the second device an acceptance of the second call-request message, and

(iii) then sending further signaling from the server to the first device

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Appeal 2024-002287 Application 16/390,351 and the second device to complete setup of the call between the first device and the second device;

determining by the server clinical information based on an identifier of the patient event with which the first call-request is associated; and

based on the determining, providing by the server to the second device the determined clinical information along with the second call- request message to the second device, to enable the second device to present the determined clinical information as a supplement to caller- identification information for the voice call between the first device and the second device, wherein providing the determined clinical information along with the second call-request message to the second device comprises providing the determined clinical information and second call-request message in a single signal. Appeal Br. 20-21 (Claims App.).

All of the italicized limitations are associated with managing interactions between people by sharing information relevant to the interactions. For example, the following limitations relate to managing interactions between people by sharing information relevant to the interactions, via determining clinical information based on an identifier of the patient event associated with the first call-request; and providing the determined clinical information along with the second call-request message to enable presenting the determined clinical information as a supplement to caller-identification information.

determining by . . . clinical information based on an identifier of the patient event with which the first call-request is associated; and

based on the determining, providing by . . . the

determined clinical information along with the second call- request message to . . ., to enable . . . to present the determined clinical information as a supplement to caller-identification information for . . ., wherein providing the determined clinical information along with the second call-request message to . . .

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Appeal 2024-002287 Application 16/390,351 comprises providing the determined clinical information and second call-request message in a single . . . . Our determination is supported by the Specification, which describes the disadvantages of managing interactions between people (such as communications between care providers and callers who contact the care providers) in prior art, and the invention's goal of overcoming such disadvantages by sharing information relevant to the interactions:

Healthcare environments can be busy, information rich, stressful and distracting. Care providers receive a torrent of information and requests for their attention. Pages, voice calls and public announcements demanding care giver attention may range from the mundane to time-critical emergencies involving the life or health of patients. In such environments, a recipient of an incoming call or page who is otherwise engaged in a healthcare task must decide whether to interrupt the task to answer the call/page. Without more information than the name or phone number of the caller (e.g., caller ID), recipients may ignore a call or page that is urgent.

Various embodiments provide methods, systems,

wireless communication devices, and non-transitory process- readable storage media for providing recipients of an incoming communication with information regarding the context and/or purposes of the call ("call context information"). Various embodiments may include receiving, by a processor of a server device, clinical information in one or more information feeds from one or more other devices, determining, by the server device, whether a communication request from a first communication device for a second communication device has been received, and sending, by the server device, a communication request message including call context information to the second communication device, wherein the call context information is based on the clinical information. Spec. ¶¶ 1-2.

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Appeal 2024-002287 Application 16/390,351 Further, Appellant's argument that the claim does not recite

"organizing interactions between people" because it "do[es] not couch the invention in terms of 'recipients' such as people" (Appeal Br. 6) is unpersuasive in light of the Specification portions shown above. Because managing interactions between people by sharing information relevant to the interactions is a fundamental activity that humans have long performed, it is one method of organizing human activity, and thus an abstract idea. See Guidance, Step 2A, Prong 1 (Groupings of Abstract Ideas)); Voter Verified, Inc. v. Election Systems & Software, LLC,

887 F.3d 1376, 1385 (Fed. Cir. 2018) ("voting, verifying the vote, and submitting the vote for tabulation" constitutes an abstract idea, because it is a "fundamental activity" that humans have performed for hundreds of years). Step 2A, Prong 2 of the Guidance

Turning to Step 2A, Prong 2 of the Guidance, contrary to Appellant's assertions (Appeal Br. 5-16; Reply Br. 3-8), we determine that claim 35 does not recite additional elements that integrate the judicial exception into a practical application. In particular, Appellant argues:

The claims do not merely recite a server providing determined information to a device but more specifically recite that the providing of the clinical information to the device involves the server providing the clinical information to a called (second) device along with the second call-request message to the called device, to enable the called device to present the clinical information as a supplement to caller-identification

information. This recited act of providing the clinical

information along with the second call request message to the called device is, on its face, a practical integration of (i) providing the clinical information and (ii) engaging in call- setup signaling, which the specification states at paragraph

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Appeal 2024-002287 Application 16/390,351 0030 can improve operation of a communication system. Furthermore, the fact that the claims additionally recite providing the clinical information and the second call-request message in a single signal additionally underscores this practical integration.

As Appellant further pointed out to the Examiner, the recited invention improves networking efficiency by having the server convey the clinical information and to the second device along with the second call-request message and specifically in the same signal as the second call-request message. Appeal Br. 13-14; see also Reply Br. 5-8.

Appellant's above arguments are unpersuasive because "a claim for a new abstract idea is still an abstract idea." Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016). "[U]nder the Mayo/Alice framework, a claim directed to a newly discovered law of nature (or natural phenomenon or abstract idea) cannot rely on the novelty of that discovery for the inventive concept necessary for patent eligibility . . . ."

Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016) (citations omitted). As shown above, each of the italicized limitations is a part of the abstract idea, and Appellant fails to show claim 35 indeed

"improves network efficiency" (Appeal Br. 14) or "add[s] technical efficiency" (Reply Br. 6). Contrary to Appellant's assertions that claim 35

"improves operation of a communication system" (Appeal Br. 14) and is "a technological advance in relation to setting up of voice call communication between devices" (Reply Br. 5), claim 35 does not provide any technological improvement in setting up communications between devices. To the contrary, claim 35 merely rearranges data that are processed in a communication system, and Appellant fails to show such data rearrangement is patent eligible.

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Appeal 2024-002287 Application 16/390,351 As a result, we conclude claim 35 is directed to the abstract idea of managing interactions between people by sharing information relevant to the interactions, and it does not recite additional elements that integrate the judicial exception into a practical application. See Guidance, Step 2A, Prong 2.⁵

Step 2B of the Guidance

Appellant does not specifically argue Step 2B of the Guidance (Alice step two). In particular, Appellant does not argue any specific limitation (when viewed individually or as an ordered combination) was not well- understood, routine, or conventional in the field. Nor does Appellant persuasively argue the Examiner erred in that aspect. Further, we emphasize the italicized portions of claim 35 are part of the abstract idea—not additional elements. See BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) (explaining the Alice "Court only assessed whether the claim limitations other than the invention's use of the ineligible concept to which it was directed were well- understood, routine and conventional" and "did not consider whether it was well-understood, routine, and conventional to execute the claimed intermediated settlement method on a generic computer" (emphasis added)). In short, Appellant has not shown why using a conventional communication system to set up a voice call and transmitting data is patent

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Appeal 2024-002287 Application 16/390,351 eligible. As a result, Appellant has not persuaded us the Examiner erred with respect to the Guidance's Step 2B analysis. See Guidance, Step 2B. Because Appellant has not persuaded us the Examiner erred, we sustain the Examiner's rejection of independent claim 35 under 35 U.S.C. § 101.

For similar reasons, we also sustain the Examiner's rejection of claims 38-45, 48-55, and 58-63 under 35 U.S.C. § 101.

35 U.S.C. § 103 A claim is unpatentable under 35 U.S.C. § 103 if the differences between the claimed subject matter and the prior art are "such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). Under § 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented. Id. (quoting Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966)).⁶ Further, "there must be some articulated reasoning with some rational

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Appeal 2024-002287 Application 16/390,351 underpinning to support the legal conclusion of obviousness." See KSR, 550 U.S. at 418.

As articulated by the Federal Circuit, the Examiner has the burden of proving unpatentability by preponderance of the evidence. See In re Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985) ("preponderance of the evidence is the standard that must be met by the PTO in making rejections"). Further, "[a] rejection based on section 103 clearly must rest on a factual basis." In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). As a result, the Examiner "must make the necessary findings and have an adequate 'evidentiary basis for [the] findings'" and "must examine the relevant data and articulate a satisfactory explanation for [the] action including a rational connection between the facts found and the choice made." In re NuVasive, Inc., 842 F.3d 1376, 1382 (Fed. Cir. 2016) (citations omitted). We "review[] the obviousness rejection for error based upon the issues identified by appellant, and in light of the arguments and evidence produced thereon." Ex parte Frye, Appeal No. 2009-006013, 2010 WL 889747, at *4 (BPAI Feb. 26, 2010) (precedential), cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) ("it has long been the Board's practice to require an applicant to identify the alleged error in the examiner's rejections"). In reaching the decision, we have considered only the arguments Appellant actually raised. Arguments that Appellant could have made but chose not to make are deemed to be forfeited. See 37 C.F.R. § 41.37(c)(1)(iv); In re Google Tech. Holdings LLC, 980 F.3d 858, 863 (Fed. Cir. 2020) ("We interpret the Patent Office to be arguing that Google's failure to raise its lexicography arguments, inadvertent or not, compels a finding of forfeiture. We agree.").

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Appeal 2024-002287 Application 16/390,351 Further, to the extent Appellant advances new arguments in the Reply Brief without showing good cause, Appellant has forfeited such arguments. See 37 C.F.R. § 41.41(b)(2) ("Any argument raised in the reply brief which was not raised in the appeal brief, or is not responsive to an argument raised in the examiner's answer, including any designated new ground of rejection, will not be considered by the Board for purposes of the present appeal, unless good cause is shown."); Google Tech. Holdings LLC, 980 F.3d at

863.

Claims 35, 38-45, 48-55, and 58-63 On this record, the Examiner did not err in rejecting independent claim 35.

We have reviewed and considered Appellant's arguments, but such arguments are unpersuasive. To the extent consistent with our analysis below, we adopt the Examiner's findings and conclusions in (i) the office action from which this appeal is taken and (ii) the Answer. Appellant contends that Shabot does not teach "wherein providing the determined clinical information along with the second call-request message to the second device comprises providing the determined clinical information and second call-request message in a single signal," as recited in claim 35. See Appeal Br. 16-19; Reply Br. 8-10. In particular, Appellant contends:

that analysis by the Examiner erroneously pushed aside what the claims actually recite as the "call-request message". The

"call-request message" in the feature at issue is the "second call-request message" - which the claims expressly recite is a request to set up the voice call between (i) the first device from which the server received a first call-request message

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Appeal 2024-002287 Application 16/390,351 requesting setup of the voice call between the first device and the second device and (ii) the second device. What the Examiner parenthetically pointed to in Shabot as being a "call request message" is not that recited "second call-request message", as it is not a request to set up a call between (i) a first device from which the server received a first call-request message requesting setup of the voice call between the first device and the second device and (ii) the second device. Rather, it is merely a system-generated message that gives a physician the phone number of a system-selected nurse for the physician to call.

Even if the inclusion of the nurse's name and phone number in Shabot's automatically generated page message is a

"call request message" by being a request for the physician to call the nurse, it is thus not the "second call-request message"

that is recited by Applicant's claims, as it is not a request to set up a voice call with a first device from which the server received a first call-request message seeking to set up the voice call. Consequently, Shabot's teaching of automatically sending that page message to the physician is not a teaching of providing in a single signal, with the determined clinical information, "the second call-request message" of Appellant's claims.

Appeal Br. 18-19; see also Reply Br. 8-10.

Appellant's arguments are unpersuasive, as they are not directed to the Examiner's specific findings. Because the Examiner relies on the combination of Hastings and Shabot to teach the disputed claim limitation, Appellant cannot establish nonobviousness by attacking Shabot individually. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). In connection with claim 35, the Examiner finds—and Appellant does not dispute—that Hastings teaches the claimed "the second call-request message" and "providing by the server to the second device the determined clinical information along with the second call-request message to the

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Appeal 2024-002287 Application 16/390,351 second device." See Final Act. 12-14. Therefore, Hastings teaches the claimed "wherein providing the determined clinical information along with the second call-request message to the second device comprises providing the determined clinical information and second call-request message."

Further, the Examiner finds—and Appellant does not dispute—Shabot teaches "providing . . . information and . . . a message in a single signal."

See Final Act. 14; Shabot 6:60-7:12 ("When the server workstation detects a critical event for a particular patient, . . . it automatically and immediately pages the responsible physician or physicians. To do this, the server workstation formulates an alphanumeric message that (1) identifies the patient and preliminary diagnosis . . . , (2) the particular critical event that has occurred and other critical alphanumeric information related to that critical event, and (3) provides the physician with the name of the responsible nurse at the hospital and a telephone number by which the physician can contact the nurse. The server 5 workstation then dials a pager network via modem 23 . . . . The information automatically formulated and sent to the pager network includes not only the critical event information just described, but also a personal identification number . . . for the particular remote pager to which the message is to be sent.").

Because Appellant does not dispute the Examiner's rationale for combining the teachings of Hastings and Shabot, Appellant has not shown that the Examiner erred in determining Hastings and Shabot collectively teach "wherein providing the determined clinical information along with the second call-request message to the second device comprises providing the

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Appeal 2024-002287 Application 16/390,351 determined clinical information and second call-request message in a single signal," as required by claim 35.⁷

Because Appellant has not persuaded us the Examiner erred, we sustain the Examiner's rejection of independent claim 35. For similar reasons, we also sustain the Examiner's obviousness rejection of independent claims 45 and 55.

We also sustain the Examiner's obviousness rejection of corresponding dependent claims 38-44, 48-54, and 58-63, as Appellant does not advance separate substantive arguments about those claims. See 37 C.F.R. § 41.37(c)(1)(iv).

CONCLUSION

We affirm the Examiner's decision rejecting claims 35, 38-45, 48-55, and 58-63 under 35 U.S.C. § 101.

We affirm the Examiner's decision rejecting claims 35, 38-45, 48-55, and 58-63 under 35 U.S.C. § 103.

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Appeal 2024-002287 Application 16/390,351

DECISION SUMMARY

In summary:

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

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