ELWHA LLC

Patent Trials and Appeals Board

Aug 26, 2020

2020002253 (P.T.A.B. Aug. 26, 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.
13/728,862 12/27/2012 Roderick A. Hyde 103315-0325 9417
103600 7590 08/26/2020
Foley & Lardner LLP
3000 K STREET N.W.
SUITE 600
WASHINGTON, DC 20007-5109
EXAMINER
GO, JOHN P
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
08/26/2020 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):
ISFDocketInbox@intven.com
ipdocketing@foley.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RODERICK A. HYDE, MURIEL Y. ISHIKAWA,
JORDIN T. KARE, ERIC C. LEUTHARDT, ELIZABETH A. SWEENEY
and LOWELL L. WOOD JR.
Appeal 2020-002253
Application 13/728,862
Technology Center 3600

Before ALLEN R. MacDONALD, IRVIN E. BRANCH, and
DAVID J. CUTITTA II, Administrative Patent Judges.

CUTITTA, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–44, which are all of the pending
claims. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

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 Elwha LLC.
Appeal Br. 2.
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Application 13/728,862

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CLAIMED SUBJECT MATTER
Invention
Appellant’s claimed subject matter relates to “electronically
estimating probable fees and costs incurred to date in providing . . .
healthcare service to the particular patient. The estimating is responsive to
. . . received data at least partially indicative of the healthcare service
provided to date” such as “a data base of historical fee and cost information
for the healthcare service.” Spec. ¶ 46.2
Exemplary Claim
Claims 1, 38, and 41 are independent. Claim 1, reproduced below
with certain limitations at issue italicized, exemplifies the claimed subject
matter:
1. computer-implemented method performed by a
server system, comprising:
electronically receiving, by a network interface of a
server system, data indicative of at least part of a healthcare
service, wherein the healthcare service includes at least one of a
diagnosis, treatment, or prevention of a particular disease,
illness, injury, or other physical or mental impairment provided
to a particular patient, the received data including image data
indicative of an activity within a proximity of the patient and
received from a mobile device of the patient, wherein the
activity within the proximity of the patient is related to
provision of the healthcare service to the patient, and wherein
the activity within the proximity of the patient is indicative of a
cost of providing the healthcare service to the patient;

2 We refer to: (1) the originally filed Specification filed December 27, 2012
(“Spec.”); (2) the Final Office Action mailed June 3, 2019 (“Final Act.”); (3)
the Appeal Brief filed November 1, 2019 (“Appeal Br.”); (4) the Examiner’s
Answer mailed November 29, 2019 (“Ans.”); and (3) the Reply Brief filed
January 27, 2020 (“Reply Br.”).
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converting, by a processing unit of the server system, the
received data into information indicative of one or more units
of service provided to the patient;
estimating, by the processing unit of the server system,
probable fees and costs incurred to date in providing the
healthcare service to the patient, the estimating responsive to
the information indicative of units of service provided to the
patient, wherein the estimating includes estimating with a
prediction interval a range in which the probable fees and costs
incurred to date will likely fall based on a probability, and
wherein the prediction interval is selected based on the
electronically received data;
outputting, by the network interface of the server system,
a notification to the mobile device of the patient in response to
the probability being below a threshold probability,
wherein the notification includes information indicative
of the probable fees and costs incurred to date in providing the
healthcare service; and
activating a camera of the mobile device to capture and
save an image of the activity occurring within the proximity of
the patient.
Appeal Br. 12 (Claims Appendix).
REJECTION
The Examiner rejects claims 1–44 under pre-AIA 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement. Final Act. 2–6.
OPINION
We review the appealed rejection for error based upon the issues
identified by Appellant and in light of Appellant’s arguments and evidence.
Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
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Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(iv) (2019).
We disagree with Appellant that the Examiner erred and adopt as our own
the findings and reasons set forth by the Examiner to the extent consistent
with our analysis herein. We add the following primarily for emphasis.
Appellant argues claims 1–44 as a group. Appeal Br. 7–11. We select
claim 1 as representative of the group. See 37 C.F.R. § 41.37(c)(1)(iv).
Claim 1 recites in part:
converting, by a processing unit of the server system, the
received data into information indicative of one or more units of
service provided to the patient;
estimating, by the processing unit of the server system,
probable fees and costs incurred to date in providing the
healthcare service to the patient, . . . wherein the estimating
includes estimating with a prediction interval a range in which
the probable fees and costs incurred to date will likely fall
based on a probability.
Appeal Br. 12.
The Examiner determines that Appellant’s Specification does not
sufficiently support these limitations “because the Specification does not
disclose how the received data is actually converted into units of service,
how probabilities for the fees and costs are determined, and further does not
disclose how the estimate is obtained from the probabilities.” Final Act. 3.
Appellant argues that “Appellant’s Specification as filed is sufficient
to show possession of the elements recited.” Appeal Br. 10 (citing Spec.
¶¶ 46, 51–54, 94, 98, and 99).
We agree with the Examiner. To satisfy the written description
requirement, the Specification must describe the claimed invention in
sufficient detail that one skilled in the art can reasonably conclude that the
inventor had possession of the claimed invention. Vas-Cath, Inc. v.
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Mahurkar, 935 F.2d 1555, 1562–63 (Fed. Cir. 1991). Specifically, to have
“possession,” the Specification must describe the claimed invention in a
manner understandable to a person of ordinary skill in the art and show that
the inventor actually invented the claimed invention. Id.; Ariad Pharms.,
Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc).
Original claims may fail to satisfy the written description requirement when
the invention is claimed and described in functional language but the
specification does not sufficiently identify how the invention achieves the
claimed function. Id. For software, this can occur when the algorithm or
steps for performing the computer function are not explained at all or are not
explained in sufficient detail. It is not enough that one skilled in the art
could write a program to achieve the claimed function because the
specification must explain how the inventor intends to achieve the claimed
function to satisfy the written description requirement. Vasudevan Software,
Inc. v. MicroStrategy, Inc., 782 F.3d 671, 681–683 (Fed. Cir. 2015); see also
Examining Computer-Implemented Functional Claim Limitations for
Compliance with 35 U.S.C. § 112, 84 Fed. Reg. 57, 62 (Jan. 7, 2019)
(hereinafter “2019 §112 Guidance”).
Here, the first limitation argued by Appellant is a computer-
implemented functional limitation, reciting “converting, by a processing unit
of the server system, the received data into information indicative of one or
more units of service provided to the patient.” This is a functional limitation
because the converting of the received data in the first limitation describes
what the claim does; converting data to obtain a desired result, i.e.,
“information indicative of one or more units of service provided to the
patient,” rather than any specific structure for performing the converting.
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MPEP 2173.05(g) citing In re Swinehart, 439 F.2d 210, 212 (CCPA 1971)
(“A claim term is functional when it recites a feature ‘by what it does rather
than by what it is’ (e.g., as evidenced by its specific structure or specific
ingredients.”). The Federal Circuit further informs that “[t]he written
description requirement is not met if the specification merely describes a
‘desired result.’” Vasudevan, 782 F.3d at 682 (quoting Ariad, 598 F.3d at
1349). The “telling question is whether the specification shows possession
by the inventor” of how this desired result “is achieved.” Id. at 683.
We agree with the Examiner’s finding that “the Specification does not
disclose how the received data is actually converted into units of service”
(Final Act. 3) because the “Specification discloses using ‘a data mining
algorithm’ of some kind to perform the conversion of the received data into
service units, but does not disclose a particular algorithm and/or set of steps
to perform the conversion” (Ans. 4). We further agree that “[m]erely
disclosing the inputs (i.e. the received data) and the outputs (i.e. the units of
service) is not sufficient to disclose the algorithm/relationship required to
obtain the outputs from the inputs.” Advisory Act. 2.
The second limitation argued by Appellant, estimating probable fees
and costs, is also a functional limitation because it broadly describes the
function––estimating––and a desired result (probable fees and costs incurred
to date in providing the healthcare service to the patient), rather than any
specific structure. Swinehart, 439 F.2d at 212. We agree with the
Examiner’s finding that the Specification “discloses that the probable fees
and costs are estimated ‘based upon rule sets or algorithms’ of some kind.
However, the present Specification does not disclose a particular algorithm
and/or set of steps to perform the estimation.” Ans. 5 (citing Spec. ¶ 51).
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Appellant’s argument “that it is not necessary to disclose a particular
algorithm to perform the claimed steps noted above in order to satisfy the
written description requirement” is unpersuasive. Reply Br. 2. The 2019
§112 Guidance requires that:
If the specification does not provide a disclosure of the
computer and algorithm(s) in sufficient detail to demonstrate to
one of ordinary skill in the art that the inventor possessed the
invention that achieves the claimed result, a rejection under 35
U.S.C. 112(a) for lack of written description must be made.”
2019 §112 Guidance citing MPEP § 2161.01, subsection I; Vasudevan, 782
F.3d at 682–83. Furthermore, Appellant fails to persuasively show that the
Specification discloses in sufficient detail any algorithm for performing the
computer functions at issue in claim 1.
Accordingly, because Appellant fails to establish that the
Specification provides the required algorithms for the limitations at issue we
sustain the Examiner’s rejection of claim 1 under 35 U.S.C. § 112, first
paragraph. We also sustain the Examiner’s 35 U.S.C. § 112, first paragraph
rejection of independent claims 38, and 41, and of dependent claims 2–37,
39, 40, and 42–44 for similar reasons.

CONCLUSION
We affirm the Examiner’s decision to reject claims 1–44 under
35 U.S.C. § 112, first paragraph.
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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–44 112, first
paragraph
Written Description 1–44
Overall
Outcome
1–44

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