Ahmed Ghouri et al.

Patent Trials and Appeals Board

Nov 29, 2019

14086670 - (R) (P.T.A.B. Nov. 29, 2019)

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.
14/086,670 11/21/2013 Ahmed Ghouri HUM2027-156B 6001
8698 7590 11/29/2019
STANDLEY LAW GROUP LLP
6300 Riverside Drive
Dublin, OH 43017
EXAMINER
LULTSCHIK, WILLIAM G
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
11/29/2019 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):
standleydocketing@standleyllp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte AHMED GHOURI and RAGHU SUGAVANAM
___________

Appeal 2018-003509
Application 14/086,670
Technology Center 3600
____________

Before JOSEPH A. FISCHETTI, PHILIP J. HOFFMANN, and
TARA L. HUTCHINGS, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

STATEMENT OF THE CASE
Appellant1 has filed a Request for Rehearing (hereinafter “Req.
Reh’g”) under 37 C.F.R. § 41.52(a)(3) of our Decision entered on
September 3, 2019 (hereinafter “Decision”). Our Decision affirmed the
Examiner’s rejection of claim 1 under 35 U.S.C. § 101 and reversed the
rejection of claim 1 under 35 U.S.C. § 112(a). Decision 19. We have

1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies Humana Inc. as the real party in interest.
Appeal Br. 2.

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jurisdiction under 35 U.S.C. § 6(b). For the reasons identified below, we
deny the Request for Rehearing.
REQUEST FOR REHEARING ARGUMENTS
Concerning Appellant’s citation to informative, non-precedential
board decisions on pages 2–4 of the Request for Rehearing, we note, we are
not bound by non-precedential informative decisions of other panels of the
Board.
Citing to Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d
1307 (Fed. Cir. 2016), Appellant asserts:
Claim 1 requires, inter alia, comparing voluminous insurance
claims data against voluminous known drug interactions in real
time, generating a danger score based on particular factors
weighted in a particular way, and communicating danger
score(s) above a predetermined threshold to users in particular
ways. The system of the present invention is not capable of
being performed manually in any actually useful way because
of the plurality of patients, the amount of data processed, the
complexity of the analysis, and the need for the results to be
achieved in real time is not possible if done manually.
Req. Reh’g 4.
We disagree with Appellant. The language of Intellectual Ventures I
LLC states “with the exception of generic computer-implemented steps,
there is nothing in the claims themselves that foreclose them from being
performed by a human, mentally or with pen and paper. See CyberSource
[Corp. v. Retail Decisions, Inc.], 654 F.3d [1366,] 1371–72 [(Fed. Cir.
2011)].” Intellectual Ventures I, 838 F.3d at 1318. Thus, under the holding
in Intellectual Ventures I LLC, the test is whether there is anything in the
claims which foreclose the claims form being performed by a human and
not, “not capable of being performed manually in any actually useful way.”
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Appellant offers no evidence other than attorney argument showing “there is
nothing in the claims themselves that foreclose them from being performed
by a human.” Req. Reh’g 4; Intellectual Ventures I, 838 F.3d at 1318.
Though the claims purport to accelerate the process of predicting a
negative outcome between two drugs being taken by a patient, our
reviewing court has held that speed and accuracy increases stemming
from the ordinary capabilities of a general purpose computer “do[] not
materially alter the patent eligibility of the claimed subject matter.”
Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d
1266, 1278 (Fed. Cir. 2012). Instead, the claims are more analogous to
those in FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089 (Fed. Cir.
2016), wherein claims reciting “a few possible rules to analyze the audit
log data” were found directed an abstract idea because they asked “the
same questions (though perhaps phrased with different words) that
humans in analogous situations detecting fraud have asked for decades.”
839 F.3d at 1094, 1095.
Appellant lists various improvements (Req. Reh’g 6–7) as examples
of “how to monitor for potential drug interactions for patients who see a
number of healthcare providers.” Id. at 6. But, again, without providing
evidence that they are improvements in the computer as contrasted with
“using patient drug information and stored drug information to predict a
negative outcome between two drugs being taken by a patient”
(Decision 12), Appellant’s assertions are without weight. Although machine
based entities are by definition in some sense technological, their use has
become so notoriously settled that merely invoking them is no more than
abstract conceptual advice to use well known technology for its intended
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purpose. See In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 612–13
(Fed. Cir. 2016).
Appellant also argues,
the use of a score provides for a threshold to be provided which
controls when alerts are provided and when they are not. . . .
The claimed solution prevents this alert fatigue problem by
providing alerts only where the score is above a particular
threshold. It is notable that as no prior art rejection is provided
in this application, these solutions must necessarily be
considered not generic, well-understood, or conventional.
Req. Reh’g 8.
We disagree with Appellant. The use of a score to provide a threshold is
the implementation of an abstraction. “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) (citing Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 90 (2012)). The alleged improvement
lies in the abstract idea itself, not to any technological improvement. See
BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1287–88 (Fed. Cir.
2018).
Finally, we note, “[g]roundbreaking, innovative, or even brilliant
discovery does not by itself satisfy the § 101 inquiry.” Ass’n for Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013). A novel and
non-obvious claim directed to a purely abstract idea is, nonetheless, patent-
ineligible. See Mayo, 566 U.S. at 90; see also Diamond v. Diehr, 450 U.S.
175, 188–89 (1981) (“The ‘novelty’ of any element or steps in a process, or
even of the process itself, is of no relevance in determining whether the
subject matter of a claim falls within the § 101 categories of possibly
patentable subject matter.”).
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CONCLUSION OF LAW
For the reasons above, we are not convinced that Appellant has
shown, with particularity, points believed to have been misapprehended or
overlooked in our Decision. See 37 C.F.R. § 41.52(a)(1) (2011).

Outcome of Decision on Rehearing:
Claims 35 U.S.C
§
Reference(s)/Basis Denied Granted
1 101 Eligibility 1

Final Outcome of Appeal after Rehearing:
Claims 35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1 101 Eligibility 1
1 112(a) Written description 1

REHEARING DENIED