Dignity Health

Patent Trials and Appeals Board

Oct 28, 2021

2021002234 (P.T.A.B. Oct. 28, 2021)

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.
15/547,861 08/01/2017 Adam Rice 128464.00272 3037
26710 7590 10/28/2021
QUARLES & BRADY LLP
ATTN: IP DOCKET
411 E. WISCONSIN AVENUE
SUITE 2400
MILWAUKEE, WI 53202-4428
EXAMINER
COLEMAN, CHARLES P.
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
10/28/2021 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):
pat-dept@quarles.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ADAM RICE
____________

Appeal 2021-002234
Application 15/547,861
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, MICHAEL C. ASTORINO, and
KENNETH G. SCHOPFER, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b).

SUMMARY OF DECISION
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appeal Brief identifies Dignity Health as the real
party in interest. (Appeal Br. 1.)
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THE INVENTION
Appellant claims a system and method for coordinating physician
matching. (Spec. ¶, Title.)
Claim 1 is representative of the subject matter on appeal.
1. A system comprising a processor executing instructions
causing a server computer, coupled to all electronic network, to:
receive, through the electronic network a transmission
encoding:
a plurality of patient attribute data defining a
patient preference profile; and
a request to match the plurality of patient attribute
data with a plurality of physician attribute data;
execute a first database query to store the plurality
of patient attribute data in a database coupled to the
electronic network;
execute a second [database] query to identify the
plurality of physician attribute data storing a plurality of
common attribute data with the plurality of patient
attribute data, the common attribute data being stored
within a plurality of data fields comprising:
a category data defining a preference type
category for the common attribute data;
a sentiment data defining a positive or
negative sentiment about the common attribute
data;
a patient preference weight value defining a
weight to be applied to the category data and the
sentiment data; and
a predictability weight value defining a
likelihood of a positive outcome from the common
attribute data;
render a user interface recommending a list of
physicians associated with the common attribute data;
and
transmit, through the electronic network, the user
interface to the client computer for display.

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THE REJECTIONS
Claims 1–20 are rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more.
Claims 1–20 are rejected under 35 U.S.C. § 103 as being unpatentable
over Harwood (US 2014/0046675 A1; pub. Feb. 13, 2014), in view of
Paliwal (US 2015/0026083 A1; pub. Jan. 22, 2015).

ANALYSIS
35 U.S.C. § 101 REJECTION
We will sustain the rejection of claims 1–20 under 35 U.S.C. § 101.
The Supreme Court
set forth a framework for distinguishing patents that
claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible
applications of those concepts. First, . . . determine
whether the claims at issue are directed to one of
those patent-ineligible concepts. . . . If so, . . . then
ask, “[w]hat else is there in the claims before us?”
. . . To answer that question, . . . consider the
elements of each claim both individually and “as an
ordered combination” to determine whether the
additional elements “transform the nature of the
claim” into a patent-eligible application. . . . [The
Court] described step two of this analysis as a search
for an “‘inventive concept’”—i.e., an element or
combination of elements that is “sufficient to ensure
that the patent in practice amounts to significantly
more than a patent upon the [ineligible concept]
itself.”
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–218 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72–73 (2012))
(citations omitted).
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To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept. The Federal Circuit has
explained that “the ‘directed to’ inquiry applies a stage-one filter to claims,
considered in light of the [S]pecification, based on whether ‘their character
as a whole is directed to excluded subject matter.’” See 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 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 so doing we apply a “directed to” two prong test: 1) evaluate
whether the claim recites a judicial exception, and 2) if the claim recites a
judicial exception, evaluate whether the judicial exception is integrated into
a practical application. 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50, 51–57 (Jan. 7, 2019) (“Guidance”).
The Examiner determines that the claims recite systems and methods
for coordinating physician matching for a patient and more particularly to
systems and methods for recommending one or more physicians to the
patient based on patient preferences matching physician profiles and thus the
claims recite a certain method of organizing human activity and a mental
process. (Final Act. 3; Ans. 6.) The Examiner finds that the additional
computer elements do not integrate the judicial exceptions into a practical
application because the additional elements do not impose any meaningful
limit on practicing the abstract idea. (Final Act. 3.) The Examiner further
finds that the additional elements of the processor, server computer,
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electronic network, and user interface are merely tools used to implement
the judicial exception. (Ans. 7.)
The Specification discloses that the present invention is a system and
method for coordinating physician matching for a patient. (Spec. ¶ 3.) The
Specification discloses that the process of choosing a healthcare provider is
time consuming and tedious and that patients may unsuccessfully meet and
spend time with multiple physicians until one is found that suits the patient’s
specific needs. (Spec. ¶ 4.)
Consistent with this disclosure, claim 1 recites “receiv[ing]. . . a
request to match the plurality of patient attribute data with a plurality of
physician attribute data,” “recommending a list of physicians . . . .”
This disclosed and recited method of matching a patient with a
physician is an activity that humans perform to find a physician and
therefore it is a certain method of organizing human activity. In addition,
the claimed method of claim 1 is similar to other methods that have been
found to be abstract. See, e.g., In re Meyer, 688 F.2d 789, 795 (CCPA 1982)
(determining that an “invention . . . concerned with replacing, in part, the
thinking processes of a neurologist with a computer” is directed to an
abstract idea); see also In re Salwan, 681 F. App’x 938, 941 (Fed. Cir. 2017)
(determining that a claimed method for transferring patient health
information “describes little more than the automation of a ‘method of
organizing human activity’ with respect to medical information”). We
therefore agree with the Examiner that claim 1 recites a certain method of
organizing human activity.
Also, we find the steps of “ receiv[ing]. . . a plurality of patient
attribute data,” “execut[ing] a first database query,” “execut[ing] a second
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[database] query,” “storing a plurality of common attribute data,” and
“recommending a list of physicians” constitute “analyzing information by
steps people go through in their minds, or by mathematical algorithms,
without more, as essentially mental processes within the abstract-idea
category.” Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354
(Fed. Cir. 2016); see also buySAFE, Inc. v. Google, Inc., 765 F.3d 1350,
1355 (Fed. Cir. 2014) (claims directed to certain arrangements involving
contractual relations are directed to abstract ideas). Thus, we find that claim
1 also recites the judicial exception of a mental process.
Turning to the second prong of the “directed to test,” claim 1 requires
additional elements only to the extent the claim recites the computer
components of a “processor,” an “electronic network,” a “first database,”
and a “user interface.” These recitations do not impose “a meaningful limit
on the judicial exception, such that the claim is more than a drafting effort
designed to monopolize the judicial exception.” Guidance, 84 Fed. Reg. at
54. We find no indication in the Specification, nor does Appellant direct us
to any indication, that the operations recited in claim 1 invoke any 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 affects a transformation or reduction of a particular article to a
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different state or thing. Nor do we find anything of record, short of attorney
argument, that attributes any 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 revised Guidance. See Guidance, 84 Fed. Reg.
at 55.
In this regard, the recitations do not affect an improvement in the
functioning of the recited computer components or other technology, do not
recite a particular machine or manufacture that is integral to the claims, and
does not transform or reduce a particular article to a different state or thing.
Id. Thus, claim 1 recites judicial exceptions that are not integrated into a
practical application, and thus, claim 1 is directed to abstract ideas.
Turning to the second step of the Alice analysis, because we find that
claim 1 is directed to abstract ideas, the claim must include an “inventive
concept” in order to be patent-eligible, i.e., there must be an element or
combination of elements that is sufficient to ensure that the claim in practice
amounts to significantly more than the abstract idea itself. See Alice, 573
U.S. at 217–18 (alteration in original) (quoting Mayo, 566 U.S. at 72–73).
The introduction of computer components into the claim does not alter
the analysis at Alice step two.
[T]he mere recitation of a generic computer cannot
transform a patent-ineligible abstract idea into a
patent-eligible invention. Stating an abstract idea
“while adding the words ‘apply it’” is not enough
for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological
environment.’” Stating an abstract idea while
adding the words “apply it with a computer” simply
combines those two steps, with the same deficient
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result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implemen[t]” an
abstract idea “on . . . a computer,” that addition
cannot impart patent eligibility. This conclusion
accords with the preemption concern that
undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of
“additional featur[e]” that provides any “practical
assurance that the process is more than a drafting
effort designed to monopolize the [abstract idea]
itself.”
Alice, 573 U.S. at 223 (alterations in original) (citations omitted).
Instead, “the relevant question is whether claim 1 does more than
simply instruct the practitioner to implement the abstract ideas . . . on a
generic computer.” Id. at 225. It does not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to retrieve, select, and apply decision criteria to data and modify
the data as a result amounts to electronic data query and retrieval—one of
the most basic functions of a computer. All of these computer functions are
well-understood, routine, conventional activities previously known to the
industry. See Elec. Power Grp., 830 F.3d at 1354; see also In re Katz
Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir.
2011) (“Absent a possible narrower construction of the terms ‘processing,’
‘receiving,’ and ‘storing,’ . . . those functions can be achieved by any
general purpose computer without special programming”). In short, each
step does no more than require a generic computer to perform generic
computer functions. As to the data operated upon, “even if a process of
collecting and analyzing information is ‘limited to particular content’ or a
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particular ‘source,’ that limitation does not make the collection and analysis
other than abstract.” SAP Am. Inc. v. InvestPic, LLC, 890 F.3d 1016, 1022
(Fed. Cir. 2018).
Considered as an ordered combination, the computer components of
Appellant’s claim 1 add nothing that is not already present when the steps
are considered separately. The sequence of data reception-analysis-
access/display is equally generic and conventional or otherwise held to be
abstract. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir.
2014) (sequence of receiving, selecting, offering for exchange, display,
allowing access, and receiving payment recited an abstraction), Inventor
Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir.
2017) (holding that sequence of data retrieval, analysis, modification,
generation, display, and transmission was abstract), Two-Way Media Ltd. v.
Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017)
(holding sequence of processing, routing, controlling, and monitoring was
abstract). The ordering of the steps is, therefore, ordinary and conventional.
Claim 1 does not, for example, purport to improve the functioning of
the computer components themselves. As we stated above, claim 1 does not
affect an improvement in any other technology or technical field. The
Specification spells out different generic equipment and parameters that
might be applied using this concept and the particular steps such
conventional processing would entail based on the concept of information
access under different scenarios. For example, the Specification discloses
that the disclosed recommendation system may be a desktop personal
computer, a PDA, a telephone, mobile phone, kiosk, and a cable box. (Spec.
¶ 20.) The user device is disclosed as being a desktop computer, laptop
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computer, smart phone, or tablet. (See, e.g., Spec. ¶ 26.) Thus, claim 1 at
issue amounts to nothing significantly more than instructions to apply the
abstract idea of information access using some unspecified, generic
computer. Under our precedents, that is not enough to transform an abstract
idea into a patent-eligible invention. See Alice, 573 U.S. at 226.
We have reviewed all the arguments (Appeal Br. 8–12) Appellant has
submitted concerning the patent eligibility of the claims before us that stand
rejected under 35 U.S.C. § 101. We find that our analysis above
substantially covers the substance of all the arguments, which have been
made. But, for purposes of emphasis, we will address various arguments in
order to make individual rebuttals of same.
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that the additional elements recite a specific manner of
automatically performing the claimed steps which provide a specific
improvement over prior systems resulting in an improved user interface for
electronic devices and thus claim 1 is not directed to the recited judicial
exceptions and includes a practical application. (Appeal Br. 9–10.)
Appellant appears to confuse the first prong of the step 2 analysis under the
Guidance with the second prong of the step 2 analysis. In this regard, in the
first prong, a determination is made on whether a judicial exception is
recited in the claims. It is only in the second prong analysis that it is
determined whether the additional elements integrate the judicial exception
into a practical application. In addition, while Appellant argues that the user
interface is improved, Appellant does not explain how the user interface,
which is disclosed as part of a generic device which is not altered by the
steps of claim 1, is nonetheless improved by the steps of claim 1. In
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addition, while claim 1 may well recite a specific manner of automatically
performing the claimed steps (Appeal Br. 10), the specificity of a claim does
not overcome patent ineligibility. A specific abstract idea is still an abstract
idea. Cf. Mayo, 566 U.S. at 88–89 (noting that “cases have not distinguished
among different laws of nature according to whether or not the principles
they embody are sufficiently narrow”) (citation omitted).
In view of the foregoing, we will sustain the Examiner’s rejection of
claim 1.
We will also sustain the rejection of the remaining claims because
Appellant either does not argue the separate eligibility of these claims or
makes the same arguments for eligibility that were made in response to the
rejection of claim 1 under 35 U.S.C. § 101.

35 U.S.C. § 103 REJECTION
The Examiner finds that Harwood discloses the majority of the
recitations in claim 1 except for the recitations related to common attribute
data, sentiment data, and the predictability weight value defining a
likelihood of a positive outcome from the common attribute data. The
Examiner relies on Paliwal for teaching the subject matter recited in claim 1
and found missing in the Harwood reference. (Final Act. 4–5). The
Examiner concludes that one of ordinary skill in the art at the time the
invention was made would have found it obvious to include “common
attribute data,” etc., as taught by Paliwal within the system as taught by
Harwood with the motivation of providing relationship management. (Final
Act. 5). We agree with the Examiner’s findings regarding the teachings of
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the prior art found on pages 4 to 5 of the Final Action and adopt same as our
own.
Appellant argues that Paliwal is not analogous art. (Appeal Br. 13.)
We agree with the Examiner’s response to this argument found on pages 3–4
of the Answer and adopt same as our own. Specifically, we agree with the
Examiner that Paliwal relates to managing and organizing a user’s
connections with members of an enterprise by matching common attributes
between users, which is pertinent to the problem faced by the inventor, i.e.,
providing users with matches that match preferences. (Paliwal ¶3, 9).
Appellant argues that neither Paliwal nor Harwood disclose, teach, or
suggest “a plurality of data fields” storing “common attribute data” made up
of “physician attribute data” and “patient attribute data.” (Emphasis
added.)
We agree with the Examiner’s response to this argument found on
page 4 of the Answer and adopt same as our own. Specifically, we agree
that the rejection is based on the combined teachings of Paliwal and
Harwood and Appellant’s argument is an attack on the teachings of the
individual references and not on the combined teachings of the references.
“Non-obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references. . . . [The reference] must be read, not in isolation, but for what it
fairly teaches in combination with the prior art as a whole.” In re Merck &
Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Appellant uses the above
argument that the prior art does not disclose common attribute data between
a physician and a patient as a basis for arguing that other subject matter
recited in claim 1 and the subject matter recited in claims 3, 4, 6, 11, 13, 14,
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and 16 would not have been obvious at the time of the invention. However,
as discussed above, this argument is not persuasive because it is directed to
the individual teachings of the prior art rather than the combined teachings
of the prior art, as relied upon by the Examiner.
In view of the foregoing, we will sustain the rejection as it is directed
to claims 1, 3, 4, 6, 11, 13, 14, and 16. We will also sustain this rejection as
is directed to claims 2, 5, 7, 12, 15, and 17 because the Appellant has not
argued the separate patentability of these claims.
However, we will not sustain the rejection as it is directed to claim 8
and dependent claim 9 because we agree with Appellant that the prior art
does not disclose the server computer executing instructions subsequent to
the appointment or requesting user feedback related to the appointment.
(Appeal Br. 17.)
The Examiner relies on paragraphs 34 and 39 of Harwood for
teaching this subject matter. (Final Act. 7.)
We find that paragraph 34 of Harwood discloses that a patient
receives a results display that shows the results list from which a patient can
review and select a medical provider. We find that paragraph 39 discloses
that the system allows medical providers to enter information into the system
and the system keeps information about complaints or recommendations,
etc. Neither paragraph discloses instructions that cause the server computer
subsequent to the appointment to transmit a request for user feedback related
to the appointment.
We will also not sustain the rejection as it is directed to claims 18 and
19 for the same reason.
We will also not sustain the rejection as it is directed to claims 10 and
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20 because we agree with Appellant that the prior art does not disclose “a
plurality of common attribute data modeled against a plurality of historical
health care outcomes data to identify a plurality of predictive attributes that,
when present, correspond to a highest quality of a patient outcome.”
(Appeal Br. 18 (emphasis omitted).)
The Examiner relies on paragraph 34 of Harwood for teaching this
subject matter. But as we found above, paragraph 34 of Harwood discloses
that a patient receives a results display that shows the results list from which
a patient can review and select a medical provider. This paragraph does not
disclose the subject matter of claims 10 and 20.

CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 1–20 under
35 U.S.C. § 101.
We conclude that the Examiner did not err in rejecting claims 1–7 and
11–17 under 35 U.S.C. § 103.
We conclude that the Examiner did err in rejecting claims 8–10 and
18–20 under 35 U.S.C. § 103.

DECISION
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–20 101 Eligibility 1–20
1–20 103 Harwood, Paliwal 1–7, 11–17 8–10, 18–20
Overall
Outcome
1–20

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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) (2019).
AFFIRMED