In an interesting decision issued last year, the Patent Trial and Appeal Board reversed the final rejection of claims 1-5 and 9 in U.S. Application No. 12/959,017.  The claims at issue had been rejected under 35 U.S.C. § 101 as reciting patent ineligible subject matter in the form of an abstract idea, and under 35 U.S.C. § 103(a) as being unpatentable over U.S. Patent No. 6,454,707 and U.S. Patent Application Publication Nos. US 2006/0226079 A1 and US 2009/0082684 A1.  This post addresses the Board's reversal of the § 101 rejection.

The '017 application relates to the identification of a patient undergoing hemodialysis treatments at increased risk for death.  Representative claim 1 recites:

1.  A method of identifying and treating a patient undergoing periodic hemodialysis treatments at increased risk for death, comprising:
    a) determining at least one clinical or biochemical parameter associated with an increased risk of death of the patient and monitoring said parameter periodically before and/or after the patient is undergoing hemodialysis treatments;
    b) determining a significant change in the rate of change of the at least one clinical or biochemical parameter from a retrospective record review of parameter values of the patient determined at prior hemodialysis treatments;
    c) identifying the patient as having an increased risk for death because the patient has the significant change in the rate of change of the at least one clinical or biochemical parameter; and
    d) treating the patient having an increased risk for death within a sufficient lead time to decrease the patient's risk of death.

In reversing the § 101 rejection, the Board began by noting that it was "persuaded by Appellants' arguments that the claimed method is not an abstract idea, because the claims 'have the particular practical application of identifying a patient as having an increased risk of death and treating the patient to decrease the risk of death.'"  The Board also noted that the Examiner's rejection of claim 1 was based on the finding that steps a) to c) can be performed with mental thought alone, and that treating step d) is not a "transformation of a patient" because "the treatment step can be anything; i.e. not necessarily having to do with hemodialysis."  In the Examiner's Answer, the Examiner concluded that "the claim is effectively [directed] to the general correlation and the abstract idea of doing the significant change analysis."

The Board, however, disagreed with the Examiner, stating that:

Although the claim includes steps that can be performed mentally, "treating the patient . . . to decrease the patient's risk of death" is not a phenomenon of nature, mental process, or abstract intellectual concept.  This is a specific type of treatment, as opposed to, for example, treating only to alleviate pain.  The claim as a whole is directed to more than just steps capable of being performed mentally.

The Board explained that "the claim, considered as a whole, is not directed merely to an abstract idea, as defined under step one of the Alice analysis, because it includes treating a patient to reduce a risk of death."  Citing Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134 S. Ct. 2347, 2359 (2014), the Board also suggested that "if one were to consider the claim under the second step of the Alice analysis, the treatment of a patient to reduce the risk of death functions to 'effect an improvement in [another] technology or technical field,' namely medicine."

The Board therefore refused to sustain the rejection of claim 1 (or dependent claims 2-5 and 9) under § 101.  After also refusing to sustain the rejection of claims 1-5 and 9 under § 103, the Board reversed the rejection of claims 1-5 and 9 under §§ 101 and 103.

Following the Board's Decision on Appeal on March 20, 2017, a Notice of Allowance was mailed on June 8, 2017.  A Request for Continued Examination and Information Disclosure Statement was filed on August 31, 2017, and a second Notice of Allowance was mailed on September 20, 2017.  The '017 application issued as U.S. Patent No. 9,883,799 on February 6, 2018.

Ex parte Kotanko (PTAB 2018)
Panel: Administrative Patent Judges Crawford, Fischetti, and Kim
Decision on Appeal by Administrative Patent Judge Crawford