Bright House Networks, LLC

Patent Trials and Appeals Board

May 1, 2020

2019000842 (P.T.A.B. May. 1, 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.
14/279,474 05/16/2014 Mark E. Swanson 1192-013 6916
27820 7590 05/01/2020
WITHROW & TERRANOVA, P.L.L.C.
106 Pinedale Springs Way
Cary, NC 27511
EXAMINER
PAULSON, SHEETAL R.
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
05/01/2020 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):
patents@wt-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MARK E. SWANSON and LEO CLOUTIER
____________________

Appeal 2019-000842
Application 14/279,474
Technology Center 3600
____________________

Before MAHSHID D. SAADAT, BARBARA A. BENOIT, and
JOHN D. HAMANN, Administrative Patent Judges.

HAMANN, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 7–11, 13–15, and 19–21. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.2

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Bright House
Networks, LLC. Appeal Br. 1.
2 Our Decision relies upon Appellant’s Appeal Brief (“Appeal Br.,” filed
July 11, 2018), Reply Brief (“Reply Br.,” filed Nov. 12, 2018), and
Specification (“Spec.,” filed May 16, 2014), as well as the Examiner’s
Answer (“Ans.,” mailed Sept. 10, 2018), the Advisory Action (“Adv. Act.,”
mailed Apr. 6, 2018), and the Final Office Action (“Final Act.,” mailed Dec.
29, 2017).
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CLAIMED SUBJECT MATTER
Appellant’s claimed invention relates to “monitoring in-home health
measurements of a patient . . . to control[] the behavior of a media device
associated with the patient based on the health measurements.” Spec. ¶ 1.
Claim 7 is representative of the subject matter on appeal and is reproduced
below.
7. A method, comprising:
automatically receiving, by a health server device
comprising a processor, a first message originating from a media
device associated with a patient, the first message requesting a
service from the media device;
automatically accessing, by the health server device, a
patient protocol of the patient;
automatically making, by the health server device, a health
data determination based on the patient protocol comprising:
automatically accessing, by the health server
device, a health measurement associated with the patient
from the patient protocol, the health measurement
identifying a physiologic measurement of the patient; and
automatically determining, by the health server
device, whether the health measurement is a desirable
health measurement or an undesirable health
measurement;
and
in response to determining that the health
measurement is an undesirable health measurement,
automatically inhibiting, by the health server device,
access to the requested service and automatically sending,
by the health server device, a message to a physician
computing device associated with the patient, the message
including the health measurement of the patient.

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REJECTIONS
(1) The Examiner rejected claims 7–11, 13–15, and 19–21 under
35 U.S.C. § 101 as being directed to patent-ineligible subject matter. Final
Act. 2–6.
(2) The Examiner rejected claims 7–11, 13–15, and 19–21 under
35 U.S.C. § 102(a)(1) as being anticipated by Brown (US 2007/0016446 A1;
published Jan. 18, 2007). Final Act. 7–10.
OPINION
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner errs. We address the Examiner’s findings and
Appellant’s arguments below.
A. § 101 REJECTION
1. Claim Grouping
Appellant substantively argues the pending claims as a group for the
Examiner’s § 101 rejection. See Appeal Br. 8; Reply Br. 4. Accordingly,
we select independent claim 7 as representative of the pending claims, and
we decide the appeal of the § 101 rejection on the basis of representative
claim 7. See 37 C.F.R. § 41.37(c)(1)(iv); In re King, 801 F.2d 1324, 1325
(Fed. Cir. 1986). We refer to the rejected claims collectively herein as “the
claims.”
2. Principles of Law
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 Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
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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 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
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.
(15 How.) 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
Supreme Court held that “a claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
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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. (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 part
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 (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.
(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.
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)
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(“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); and
(2) additional elements that integrate the judicial exception into a
practical application, i.e., elements that 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 (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.

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.p
df).
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.
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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.
3. The Judicial Exception – Prong One of Step 2A
The Examiner determines that the claims recite the abstract idea of
“providing access to an incentive based on [a] comparison of [a] patient’s
[health] measurements to a [pre-]defined patient protocol,” which is an “idea
of itself.” Final Act. 2 (bold emphasis omitted). In other words, the
Examiner finds that the claims recite “a mental process (thinking) that ‘can
be performed in the human mind, or by a human using a pen and paper.’”
July 2015 Update: Subject Matter Eligibility at 5 (footnote omitted)
(explaining the meaning of the phrase “an idea ‘Of Itself’”).
As we discuss below, we agree with the Examiner that the claims
recite an abstract idea. Generally, Appellant’s claims concern providing
incentives to a patient to promote their participation in health monitoring and
healthy behavior. Spec. ¶¶ 4, 35–36, Abstract. In particular, claim 7 recites
the steps of (i) “receiving . . . a first message . . . requesting a service”;
(ii) “accessing . . . a patient protocol of [a] patient”; (iii) “accessing . . . a
health measurement associated with the patient from the patient protocol, the
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health measurement identifying a physiologic measurement of the patient”;
and (iv) “determining . . . whether the health measurement is a desirable
health measurement or an undesirable health measurement.” Appeal Br. 16
(reciting claim 7).
We agree with the Examiner that these limitations recite a mental
process, which is an abstract idea within grouping (c) under the guidance.
2019 Revised Guidance, 84 Fed. Reg. at 52 (“(c) Mental processes—
concepts performed in the human mind (including an observation,
evaluation, judgment, opinion)”); see also Final Act. 2. For example, claim
7’s above limitations relate to collecting information (a service request and
patient health measurements), comparing the collected information with
known information (comparing the health measurements to the expected
metrics of a patient protocol), and analyzing the information (determining
whether the health measurement is desirable or undesirable). Appeal Br. 16
(reciting claim 7); Final Act. 4. These steps allow for performance manually
or mentally (but for a generic “health server device” and “media device”),
and thus, fall within the mental processes category. See Intellectual
Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016)
(“[W]ith 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.”).
4. Integration into a Practical Application – Prong Two of Step 2A
Claim 7 recites, in addition to the abstract idea discussed above, (i) a
“health server device comprising a processor,” a “media device,” and a
“computing device,” which are used in connection with “automatically”
performing recited steps; and (ii) the step of “in response to determining that
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the health measurement is an undesirable health measurement, inhibiting . . .
access to the requested service and . . . sending . . . a message to a physician
. . ., the message including the health measurement of the patient.” Appeal
Br. 16 (reciting claim 7). As we discuss below, these devices and this
additional step do not integrate the judicial exception into a practical
application. See 2019 Revised Guidance, 84 Fed. Reg. at 55 (citing MPEP
§ 2106.05(a)–(c), (e)–(h)).
Appellant argues that the claims are “aimed at improvements in
automated healthcare monitoring, protocol compliance, and notifications.”
Appeal Br. 5–6; Reply Br. 3; see also MPEP § 2106.05(a). These purported
improvements in automation (i.e., “automatically” performing recited steps),
however, relate to the abstract idea, and do not improve a computer,
technology, or a technical field. See McRO, Inc. v. Bandai Namco Games
Am., Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016) (“We . . . look to whether
the claims in these patents focus on a specific means or method that
improves the relevant technology or are instead directed to a result or effect
that itself is the abstract idea and merely invoke generic processes and
machinery.”) (citing Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336
(Fed. Cir. 2016)); see also Ans. 11–12. Moreover, the “‘mere automation of
manual processes using generic computers’ . . . ‘does not constitute a
patentable improvement in computer technology.’” Trading Techs. Int’l,
Inc. v. IBG LLC, 921 F.3d 1378, 1384 (Fed. Cir. 2019) (quoting Credit
Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017)).
Accordingly, the claims “automatically” performing recited steps does not
integrate the judicial exception into a practical application under MPEP
§ 2106.05(a).
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Furthermore, the claims do not “recite the use of a particular
machine,” as Appellant argues the claims’ limitations create, but rather
describe steps (e.g., “receiving,” “accessing,” and “determining”) to be
carried out by the equivalent of generic computers (i.e., “a health server
device comprising a processor” and a “media device”). See Appeal Br. 7,
16; see also Spec. ¶¶ 61, 68 (disclosing generic computer elements for the
claimed devices). “[A] general purpose computer that applies a judicial
exception, such as an abstract idea, by use of conventional computer
functions does not qualify as a particular machine.” MPEP § 2106.05(b)
(citing Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716–17 (Fed. Cir.
2014)).
Nor do “the claim[s] effect[] a transformation or reduction of a
particular article to a different state or thing.” See MPEP § 2106.05(c).
Instead, the claims simply concern providing incentives to a patient to
promote their participation in health monitoring and healthy behavior. As
such, the claims have no other meaningful limitations on the above
identified judicial exceptions. See id. § 2106.05(e).
Moreover, nothing in the claims, understood in light of the
Specification, requires anything other than off-the-shelf computer devices
that are simply used to implement the abstract idea. See Appeal Br. 16
(reciting a “health server device,” a “media device,” and a “computing
device” for claim 7); Ans. 11–12. For example, the Specification discloses
that a “health server device . . . may comprise any computing or processing
device capable of executing software instructions.” Spec. ¶ 61; see also
Ans. 13 (citing same). Similarly, the Specification discloses that a “media
device . . . may comprise any computing or processing device capable of
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including firmware, hardware, and/or executing software instructions.”
Spec. ¶ 68. Lastly, the Specification lacks any details about the structure of
a “computing device” (which serves to receive messages about patients’
health measurements), and thus, we find
a “computing device” is simply a generic computer. Id. ¶¶ 8, 58. See
Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315, 1331 (Fed.
Cir. 2017) (“The claimed mobile interface is so lacking in implementation
details that it amounts to merely a generic component (software, hardware,
or firmware) that permits the performance of the abstract idea, i.e., to
retrieve the user-specific resources.”). It is well established that “‘generic
computer implementation’ is insufficient to transform a patent-ineligible
abstract idea into a patent-eligible invention.” Affinity Labs of Tex., LLC v.
DIRECTV, LLC, 838 F.3d 1253, 1262–63 (Fed. Cir. 2016) (citing Alice, 573
U.S. at 212, 221). The claims, at best, amount to nothing more than
applying the abstract idea using generic computer components and
functions, which does not render the abstract idea eligible. See Alice, 573
U.S. at 222; Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1332
(Fed. Cir. 2015) (quoting Alice, 573 U.S. at 223) (finding an inventive
concept “requires more than simply stating an abstract idea while adding the
words ‘apply it’ or ‘apply it with a computer’”); MPEP § 2106.05(f).
In addition, we are not persuaded that the additional step of “in
response to determining that the health measurement is an undesirable health
measurement, inhibiting . . . access to the requested service and . . . sending
. . . a message to a physician . . ., the message including the health
measurement of the patient” renders the claims patent eligible subject
matter. Rather, inhibiting access to a service and sending a message to a
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physician if the health measurement is undesirable is insignificant post-
solution activity to the abstract idea, which does not integrate the abstract
idea into a practical application. See MPEP § 2106.05(g); see also
Ultramercial, 772 F.3d at 715–16 (restricting public access to media was
found to be insignificant extra-solution activity); Flook, 437 U.S. at 590
(step of adjusting an alarm limit based on the output of a mathematical
formula was “postsolution activity” and did not render method patent
eligible).
We also are not persuaded by Appellant’s argument that the claims
comprise patent-eligible subject matter because they provide a “specific and
essential” link to a technological environment (i.e., “automated healthcare
monitoring, compliance, and notifications”). Appeal Br. 7. “[L]imitations
that amount to merely indicating a field of use or technological environment
[(i.e., a healthcare monitoring context)] in which to apply a judicial
exception do not amount to significantly more than the exception itself.”
MPEP § 2106.05(h) (citing Diehr, 450 U.S. at 192 n.14); see also Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016)
(finding that limiting an abstract idea to the electric power grid is simply an
ineffective attempt to limit the use of the abstract idea to a particular
technological environment); Ans. 5–6.
Lastly, we also are not persuaded by Appellant’s argument that the
claims “do not tie up any judicial exception.” Appeal Br. 6. A lack of
preemption does not make a claim patent eligible. See Ariosa Diagnostics,
Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (“While
preemption may signal patent ineligible subject matter, the absence of
complete preemption does not demonstrate patent eligibility.”).
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Thus, the claims do not integrate the judicial exception into a practical
application. On this record, we are unpersuaded that the Examiner erred in
determining that the claims are directed to an abstract idea.
5. The Inventive Concept – Step 2B
Claim 7 also lacks an inventive concept. To determine whether
claim 7 provides an inventive concept, we consider the additional elements,
individually and in combination, to determine whether (1) they add a
specific limitation beyond the judicial exception that is not well-understood,
routine, conventional activity in the field or (2) simply append
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 56.
Outside of the abstract idea and post-solution activity, the additional
elements only recite generic computer components and functions that are
well-understood, routine, and conventional. See Final Act. 5–6; Ans. 11–13;
Spec. ¶¶ 31, 61, 68; Alice, 573 U.S. at 226. We agree with the Examiner
that “the [S]pecification makes clear that off-the-shelf computer technology
is usable to carry out the” claims. Ans. 11–12 (citing Spec. ¶ 61). In
particular, the Examiner finds, and we agree, that the claimed “‘media
device’ and the ‘processor’ of the ‘health server device’ are generic
computer components recited at a high degree of generality.” Id. at 13. For
example, as the Examiner finds, “the current [S]pecification demonstrates
the well-understood, routine, conventional nature of the elements” in
paragraphs 31 and 61, in accordance with Berkheimer v. HP Inc., 881 F.3d
1360, 1368 (Fed. Cir. 2018). Id. at 14.
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We are not persuaded by Appellant’s argument that “the Examiner has
not demonstrated how automatically inhibiting access to a requested
service and automatically notifying a physician if a medical condition is not
improving or worsening is ‘well-understood, routine, and conventional
activity.’” Reply Br. 4. Notably, Appellant’s claims—whether the elements
are considered individually or as an ordered combination—recite only
generic components (i.e., a “health server device,” a “media device,” and a
“computing device”) and generic functions (e.g., “receiving,” “accessing,”
and “determining”). Appeal Br. 16; Spec. ¶¶ 31, 61, 68 (disclosing off-the-
shelf, conventional computer components).
But simply adding generic computer components to perform abstract
ideas does not provide an inventive concept because the “mere recitation of
a generic computer cannot transform a patent-ineligible abstract idea into a
patent-eligible invention.” Alice, 573 U.S. at 223; see also Elec. Power, 830
F.3d at 1355 (“Nothing in the claims, understood in light of the
specification, requires anything other than off-the-shelf . . . computer,
network, and display technology for gathering, sending, and presenting the
desired information.”); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355
(Fed. Cir. 2014) (finding the invocation of computers and generic
functionality adds no inventive concept); MPEP § 2106.05(d) (“Courts have
held computer‐implemented processes not to be significantly more than an
abstract idea (and thus ineligible) where the claim as a whole amounts to
nothing more than generic computer functions merely used to implement an
abstract idea . . . .”)). Consequently, we find that the above-identified claim
elements, at the high level of generality recited in claim 7, constitute no
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more than what would have been well-understood, routine, and conventional
to a skilled artisan. See Berkheimer, 881 F.3d at 1368.
Accordingly, we agree with the Examiner that the claims are patent
ineligible. For the above reasons, we sustain the Examiner’s § 101 rejection
of representative claim 7, as well as claims 8–11, 13–15, and 19–21,
grouped therewith.
B. § 102(a)(1) REJECTION
1. Claims 7 and 19
Appellant argues that Brown fails to disclose “in response to
determining that the health measurement is an undesirable health
measurement, . . . automatically sending . . . a message to a physician
computing device associated with the patient, the message including the
health measurement of the patient,” as recited in independent claim 7, and in
independent claim 19 in similar scope. Appeal Br. 9–12; Reply Br. 4–6. To
that end, Appellant argues that Brown does not “disclose automatically
sending a message to a physician in response to determining an undesirable
health measurement, or in response to anything.” Appeal Br. 10. Rather,
Brown discloses displaying data to a health provider, regardless of whether
the health measurement is desirable or undesirable, according to Appellant.
Id. (citing Brown, Fig. 10) (arguing that both paths that flow from the “IS
PATIENT IN COMPLIANCE?” decision block 216 lead to DISPLAY
DATA AND STATUS TO PROVIDER block 226). Appellant argues, thus,
Brown does not disclose “tak[ing] any automatic action in response to
anything,” and in particular, “does not disclose automatically notifying a
physician upon determining an undesirable health measurement of a
patient.” Id. (emphasis omitted). In addition, Appellant argues that Brown
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discloses “requir[ing] the physician to access [a] server and database for
patient information.” Reply Br. 4–5 (citing Brown ¶ 39, Fig. 1). Put
differently, Brown discloses that the physician retrieves patient information,
instead of being automatically sent such information, as claimed, according
to Appellant. Reply Br. 5–6.
The Examiner finds that Brown discloses the disputed limitation.
Final Act. 8, 12; Adv. Act. 2; Ans. 14–15. More specifically, the Examiner
finds that Brown discloses “determining whether the patient is in compliance
or not, and if not, . . . displaying the [compliance] data and status to the
[healthcare] provider.” Final Act. 12 (citing Brown, Fig. 10 (steps 216, 222–
226)); Ans. 15 (same). In other words, the Examiner finds that Brown
discloses “sending patient measurement data . . . to the healthcare provider
when it is determined to be desirable or undesirable.” Id. (citing Brown
¶ 54, Fig. 9); Ans. 14–15 (same). Furthermore, the Examiner finds that
Brown discloses sending the message to a physician because “all of the
information is entered by the patient into the set-top box,” before the
physician receives the message in response to the non-compliance of the
health measurements. Adv. Act. 2 (citing Brown ¶ 65).
We are not persuaded of Examiner error. Rather, we agree with the
Examiner that Brown discloses automatically sending a message having a
patient’s health measurement to a physician’s computing device in response
to determining that the health measurement is undesirable. See Brown
¶¶ 54, 65, Figs. 9–10. For example, Brown’s Figure 10 discloses monitoring
a remote patient’s measurements (steps 210–214), and if the measurements
do not show compliance (step 216), having “the compliance data . . . of the
patient . . . displayed to the healthcare provider” (step 226). Brown ¶ 54,
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Fig. 10 (step 226, labeled as “DISPLAY DATA AND STATUS TO
PROVIDER”). Brown discloses that this compliance data includes a
patient’s health measurements (e.g., glucose levels (MG/DL)). See Brown
¶ 54, Fig. 9, Abstract (“[T]he compliance data includes measurements of a
physiological condition.”).
We are not persuaded by Appellant’s argument that Brown fails to
disclose automatically sending a message to a physician in response to
anything because the message is sent regardless of whether the patient is in
compliance. Appeal Br. 10. As Brown’s Figure 10 shows, compliance data
is sent for display to the healthcare provider (step 226) in response to
determining that the patient is not in compliance (step 216, NO branch).
Brown, Fig. 10 (steps 216 and 222–226). This disclosure in Brown is not
negated by Brown’s additional disclosure that compliance data also would
be sent for display to the healthcare provider along a different path (steps
218, 220, and 226) in response to determining that the patient is in
compliance (step 216, YES branch). Id.
We also are not persuaded by Appellant’s argument that Brown fails
to disclose that the message is automatically sent to the physician computer
device because Brown discloses “requir[ing] the physician to access [a]
server and database” to retrieve the message. Reply Br. 4–5. Rather, Brown
discloses that the message is automatically transmitted from the patient’s
home set-top box to a central server at a healthcare clinic for local display to
a physician’s workstation. See Brown ¶¶ 39, 65, Figs. 1, 10. Such
disclosure is within the broadest reasonable interpretation of “automatically
sending . . . a message to a physician computing device,” and is appropriate
here. See In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir.
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2007) (“[A]s applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
patentee.”).
Accordingly, we sustain the Examiner’s § 102(a)(1) rejection of
independent claims 7 and 19.
2. Claim 9
Appellant argues that Brown fails to disclose “in response to
determining that the health measurement is an undesirable health
measurement, sending presentation content to the media device for
presentation to the patient in lieu of the service,” as recited in dependent
claim 9. Appeal Br. 12 (italics emphasis omitted). More specifically,
Appellant argues that Brown discloses “denying service, but not sending
presentation content in lieu of a requested service.” Id. (citing Brown, Fig.
9).
The Examiner finds, and we agree, that Brown discloses the disputed
limitation. Ans. 15. More specifically, we agree with the Examiner that
Brown discloses sending presentation content (i.e., a message) in lieu of
service in response to determining that the health measurement is
undesirable. Id. (citing Brown, Figs. 8–9; ¶ 53). For example, Brown
discloses sending an instructional message (i.e., presentation content), in
response to non-compliance and in lieu of the service, to appear on a
patient’s television “explain[ing] why access to the entertainment program is
being restricted and [providing] compliance instructions which include a
description of an action the patient must perform to satisfy the evaluation
criteria.” Brown ¶ 53; see also id. at Fig. 8 (illustrating a sample
instructional message that begins “YOUR ACCESS TO
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ENTERTAINMENT PROGRAMS IS BEING DENIED DUE TO YOUR
FAILURE TO COMPLY WITH YOUR TREATMENT PLAN”).
Accordingly, we sustain the Examiner’s § 102(a)(1) rejection of
dependent claim 9.
3. Claim 13
Appellant argues that Brown fails to disclose “receiving . . . a
message . . . [that] compris[es] information identifying . . . a health
measurement device that took the health measurement,” as recited in
dependent claim 13. Appeal Br. 13 (italics emphasis omitted); Reply Br. 6.
Appellant argues that Brown only discloses displaying patient compliance
information, which does not include the health measurement device. Appeal
Br. 13. In particular, Brown’s data view program displays device
measurements, but “does not identify a health measurement device that took
the health measurement[s],” according to Appellant. Id. (citing Brown ¶ 39,
Fig. 9). Appellant adds that “[d]ata transmission and processing is not
equivalent to printed matter on a substrate,” and thus, [t]he subject matter in
dependent claim 13 is patentable and should receive patentable weight.”
Reply Br. 6.
The Examiner finds that the disputed limitation is nonfunctional
descriptive material, and is not entitled to patentable weight. Ans. 16–17
(citing In re DiStefano, 808 F.3d 845 (Fed. Cir. 2015); In re Lowry, 32 F.3d
1579 (Fed. Cir. 1994); In re Ngai, 367 F.3d 1336 (Fed. Cir. 2004)). In
particular, the Examiner finds “that the message received by the device does
not change the structure of the system and is considered to be nonfunctional
descriptive material.” Id. at 17.
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We agree with the Examiner that the disputed limitation is
nonfunctional descriptive material. First, we find that having “the message
compris[e] information identifying . . . a health measurement device that
took [a] health measurement” claims the content of information (i.e., the
identity of the health measurement device), and thus, is printed matter. See,
e.g., DiStefano, 808 F.3d at 848 (“[A] limitation is printed matter only if it
claims the content of information.”). Second, we find that there is no
functional relationship between this disputed step and any other claimed
step. See MPEP § 2111.05 (citing In re Kao, 639 F.3d 1057, 1072–73 (Fed.
Cir. 2011); King Pharm. Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1279 (Fed.
Cir. 2010)) (“The rationale behind the printed matter cases . . . has been
extended to method claims[, and] . . . the relevant inquiry is whether a new
and unobvious functional relationship with the known method exists.”). Put
differently, no other claimed step makes any functional use of the identity of
the health measurement device. Appeal Br. 16–17 (reciting independent
claim 7 and claim 13, which depends therefrom). Thus, we find that the
disputed limitation is nonfunctional descriptive material, which is not
entitled to patentable weight. See, e.g., MPEP § 2111.05; Kao, 639 F.3d at
1072–73; King Pharm., 616 F.3d at 1279; see also In re Gulack, 703 F.2d
1381, 1385 (Fed. Cir. 1983) (noting that when descriptive material is not
functionally related to the substrate, the descriptive material will not
distinguish the invention from the prior art in terms of patentability).
In addition, we are not persuaded by Appellant’s argument that claims
relating to data transmission and processing cannot have equivalence to
printed matter on a substrate. Reply Br. 6. See DiStefano, 808 F.3d at 850
(citing Lowry, 32 F.3d at 1583–84) (finding that previously a computer-
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based structural database was found not to be printed matter, “not because it
involved a computer, but because the data structures” contained information
that was used functionally elsewhere in the claim). Moreover, MPEP
§ 2111.05 evidences that computer systems and their media can constitute
printed matter, as they also are subject to the test for nonfunctional
descriptive material. See MPEP § 2111.05 (“[W]here the claim as a whole is
directed to conveying a message or meaning to a human reader independent
of the intended computer system, and/or the computer-readable medium
merely serves as a support for information or data, no functional relationship
exists.”).
Accordingly, we sustain the Examiner’s § 102(a)(1) rejection of
dependent claim 13.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference/Basis Affirmed Reversed
7–11, 13–15,
19–21
101 Subject Matter
Eligibility
7–11, 13–15,
19–21

7–11, 13–15,
19–21
102(a)(1) Brown 7–11, 13–15,
19–21

Overall
Outcome
7–11, 13–15,
19–21

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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED