Ex Parte ACKERSON et al

Patent Trial and Appeal Board

Mar 4, 2019

13112636 (P.T.A.B. Mar. 4, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/112,636 05/20/2011
46169 7590 03/06/2019
SHOOK, HARDY & BACON L.L.P.
(Cerner Corporation)
Intellectual Property Department
2555 GRAND BOULEVARD
KANSAS CITY, MO 64108-2613
FIRST NAMED INVENTOR
ROBERT SCOTT ACKERSON
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
CRNI.160228 7890
EXAMINER
MORGAN, ROBERT W
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
03/06/2019 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):
IPDOCKET@SHB.COM
IPRCDKT@SHB.COM
BPARKERSON@SHB.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT SCOTT ACKERSON, BRIAN ROBERT CARTER, and
CLAY PATTERSON
Appeal 2017-011761
Application 13/112,636
Technology Center 3600
Before JEAN R. HOMERE, RAMA S. ELLURU, and
HUNG H. BUI, Administrative Patent Judges.
Per Curiam.
Concurring-in-part Opinion re: 35 U.S.C. § 101 filed by Administrative
Patent Judges, BUI and ELLURU.
Dissenting-in-part Opinion re: 35 U.S.C. § 101 filed by Administrative
Patent Judge, HOMERE.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-5, 7, 8, 10-12, 14, 15, and 17-19, which constitute all claims
pending in this application. 1 App. Br. 4. Claims 6, 9, 13, 16, and 20 have
been canceled. Claims App. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify the real party in interest as Cemer Innovation, Inc.
App. Br. 1.
Appeal 2017-011761
Application 13/112,636
Introduction
According to Appellants, the claimed subject matter relates to a
method of downloading and updating a local copy of a user's medical record
at an authenticated terminal within a medical computing environment
including clinical laboratories, hospitals, providers' offices, home healthcare
environments (103-106) connected to a central server (101) via a network
(107). Spec. ,r,r 4, 22-24, Fig. 1. In particular, upon receiving identification
information from an activated user identification card, the authenticated
terminal (103-106) is allowed to quickly connect with a central data store
(102) via the network (107) to download to a local database updated health-
related events pertaining to the user. Id. ,r,r 27-28.
USER l[i i~lPUT
DEVICE
, . ..-i03
AUTHf:NTICA fff.l
TEBMINAL C
...............•.... .!·108
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i TERMiNAl
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FIG. 1
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Figure 1 depicts a schematic of a system for maintaining a user health
record:
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Application 13/112,636
Representative Claim
Claims 1, 7 and 14 are independent. Independent claim 1 is
representative, and is reproduced below with a disputed limitation italicized:
1. Non-transitory computer storage media having computer-
executable instructions stored thereon that, when executed by a
computing device, cause the computing device to perform a
method of updating a user's health record, the method
compnsmg:
receiving identification information from a user
identification card at an authenticated terminal during a first
encounter;
determining whether a connection with a user health
record for the user at a central data store is established for the
authenticated terminal; and
if the connection is not established for the authenticated
terminal,
establishing the connection for the authenticated
terminal with the user health record at the central data
store;
determining that the user health record was not
previously stored on a database associated with the
authenticated terminal;
using the identification information to determine a
portion of the user health record to select for storing as a
local copy of the user health record on the database
associated with the authenticated terminal;
requesting, from the central data store, the portion
of the user health record to download and store as the
local copy of the user health record on the database
associated with the authenticated terminal;
storing the local copy of the user health record on
the database associated with the authenticated terminal;
receiving identification information from the user
identification card at the authenticated terminal during a
second encounter; and
requesting updates to the local copy of the user
health record in response to the receiving identification
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Application 13/112,636
Gray
Joao
information from the user identification card at the
authenticated terminal during the second encounter.
References Relied Upon
US 6,268,788 Bl
US 2002/0032583 Al
McLaughlin et al. US 2009/0024416 Al
(hereinafter "McLaughlin").
July 31, 2001
Mar. 14, 2002
Jan.22,2009
Rejections on Appeal
Claims 1-5, 7, 8, 10-12, 14, 15, and 17-19 stand rejected under 35
U.S.C. § 101 as being directed to patent-ineligible subject matter. Final Act.
3.
Claims 1-5, 7, 8, 10-12, 14, 15, and 17-19 stand rejected under 35
U.S.C. § 103 as being unpatentable over the combination of McLaughlin,
Joao, and Gray. Final Act. 4--10.
ANALYSIS 2
§ 103 Rejection
Section 103 forbids issuance of a patent when "the
differences between the subject matter sought to be patented
and the prior art are such that the subject matter as a whole
would have been obvious at the time the invention was made to
a person having ordinary skill in the art to which said subject
matter pertains."
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) ("KSR"). The
question of obviousness is resolved on the basis of underlying factual
2 We refer to Appellants' arguments and the Examiner's findings and
conclusions set forth in the Final Office Action (mailed July 14, 2016)
("Final Act."), the Appeal Brief (filed March 6, 2017) ("App. Br."), the
Answer (mailed July 24, 2017) ("Ans."), and the Reply Brief (filed
September 21, 2017) ("Reply Br.") for the respective details.
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Application 13/112,636
determinations including (1) the scope and content of the prior art, (2) any
differences between the claimed subject matter and the prior art, (3) the level
of skill in the art, and ( 4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966).
Appellants argue that the Examiner erred in rejecting claim 1 over the
combination of McLaughlin, Joao, and Gray because none of the cited
references teaches or suggests "using the identification information to
determine a portion of the user health record to select for storing as a local
copy of the user health record on the database associated with the first
authenticated terminal." App. Br. 21-22. In particular, Appellants argue
that McLaughlin discloses accessing a patient's medical records, storing
them as encrypted data on a smartcard, and the patient providing biometric
data ( e.g., fingerprint) to decrypt the stored data for subsequent use or
transfer to another medium. Id. at 22. Appellants argue that the cited
disclosure of McLaughlin's fails to teach determining a portion of the
patient's health record to select for storing based on the entered biometric
data. Id. Further, Appellants argue that Joao's disclosure of continuously
updating various databases with latest updates to maintain consistency there
between does not cure the noted deficiencies of McLaughlin. Id. at 23.
According to Appellants, J oao indiscriminately updates data based on
various sources, as opposed to identifying particular information to update
based on entered identification data. Id. at 24. Additionally, Appellants
argue that Gray's disclosure of controlling access to a computing system by
verifying data entered through a scanner with data stored on a token while
isolating data entered from a computer is similarly deficient. Id. These
arguments are not persuasive.
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Overview of McLaughlin
Figures 1 and 2 of McLaughlin are reproduced below:
25 .. ,_"
.--2···~ / ...
'
t
t
14 ·,"
\
Physk:ian
Office
System
Hospita]
System
....... __ .........
Phannacv
" System
20···)'
FIG.1
18 .,,
\
Ambulance
System
24 '"' '
Research
System
Patient
System
'
Figure 1 shows a medical information management system having a
database of patient medical information for access by authorized patients
from a base unit at various healthcare facilities.
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Application 13/112,636
FIG.2
Figure 2 depicts a base unit with a biometric/smartcard reader at a
healthcare facility.
As depicted in Figure 1, McLaughlin discloses a healthcare medical
management system for allowing an authorized user (25) at a healthcare
facility ( 14, 16, 18, and 20) to access healthcare records of a patient locally
or from a remote location (12, 13, 22, and 24) via the Internet (10).
McLaughlin Abstract, ,r 27. As shown in Figure 2, the healthcare facility
(25) is equipped with a healthcare workstation (28) coupled to a database
system (44) and an authentication system (26) including a smartcard (32)
and a fingerprint reader (28) for authenticating the user (25). Id. ,r,r 31, 34.
In particular, upon verifying the patient's biometric information, the system
(12) permits patients to retrieve and review their own medical information
including biographical data, health record, and medical insurance. Id. ,r 31.
Further, the system (12) allows the patient to transfer the medical
information to the healthcare workstation. Id. ,r 4 7.
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As correctly noted by the Examiner, Appellants' arguments are
tantamount to an individual attack against the references. Ans. 20. One
cannot show non-obviousness by attacking the references individually where
the rejections are based on combinations of references. In re Merck & Co.,
800 F.2d 1091, 1097 (Fed. Cir. 1986); see also In re Keller, 642 F.2d 413,
425 (CCP A 1981 ). In this case, the Examiner relies upon McLaughlin for its
teaching of a patient, using biometric identification at an authenticated
terminal, to access a remote database (12) patient information, which is
transferred via the Internet to a database associated with the authenticated
terminal. Ans. 21 (citing McLaughlin ,r,r 8, 24, 45, and 47. Further, the
Examiner relies upon J oao' s disclosure of a system for synchronizing
healthcare information between a central database connected to a plurality of
local databases in a network environment. Id. at 6, 22 (citing Joao ,r,r 28, 38,
and 54-- 56). Additionally, the Examiner relies upon Gray's disclosure of
receiving identification information at the authenticated terminal during a
second encounter. Id. at 7, 22 (citing Gray Abstract, 4:28---60).
We agree with the Examiner that the proposed combination of the
cited references would predictably result in a healthcare medical
management system wherein a remote database, upon authenticating a
patient's entered credentials, allows the patient to download to the
authenticated terminal a local copy of the user's health record, or updated
portions thereof. Id. We find the Examiner's proposed combination of the
cited teachings of McLaughlin, Joao, and Gray is no more than a simple
arrangement of old elements with each performing the same function it had
been known to perform, yielding no more than one would expect from such
an arrangement. KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,416 (2007).
The ordinarily skilled artisan, being "a person of ordinary creativity, not an
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Application 13/112,636
automaton," would be able to fit the teachings of the cited references
together like pieces of a puzzle to predictably result in a healthcare medical
management system wherein a remote database, upon authenticating a
patient's entered credentials, allows the patient to download to the
authenticated terminal a local copy of the user's health record, or updated
portions thereof. Id. at 420-21. Because Appellants have not demonstrated
that the Examiner's proffered combination would have been "uniquely
challenging or difficult for one of ordinary skill in the art," we agree with the
Examiner that the proposed modification would have been within the
purview of the ordinarily skilled artisan. Leapfrog Enters., Inc. v. Fisher-
Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at
418). Consequently, we are satisfied that, on the record before us, the
Examiner has established by a preponderance of the evidence that the
combination of McLaughlin, Joao, and Gray renders claim 1 unpatentable.
Accordingly, we are not persuaded of error in the Examiner's obviousness
rejection of claim 1.
Regarding the rejection of claims 2-5, 7, 8, 10-12, 14, 15, and 17-19,
Appellants have not presented separate patentability arguments or reiterated
substantially the same arguments as those previously discussed for
patentability of claim 1. As such, those claims fall therewith. See 37 C.F.R.
§ 41.37(c)(l)(iv).
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Patent Eligible Subject Matter
To determine whether claims are patent eligible under 35 U.S.C.
§ 101, we apply the Supreme Court's two-step framework articulated in
Alice Corp. v. CLS Bankint'l, 573 U.S. 208 (2014). First, we determine
whether the claims are directed to a patent-ineligible concept: laws of nature,
natural phenomena, and abstract ideas. Id. at 216-17. If so, we then
proceed to the second step to consider the elements of the claims
"individually and 'as an ordered combination"' to determine whether there
are additional elements that "'transform the nature of the claim' into a
patent-eligible application." Id. at 217. In other words, the second step is to
"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."' Id.
( alteration in original).
The Federal Circuit has described the Alice step-one inquiry as
looking at the "focus" of the claims, their "character as a whole," and the
Alice step-two inquiry as looking more precisely at what the claim elements
add-whether they identify an "inventive concept" in the application of the
ineligible matter to which the claim is directed. See Elec. Power Grp., LLC
v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016); Enfzsh, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016); Internet Patents
Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015).
Because there is no single definition of an "abstract idea" under Alice
step 1, the Federal Circuit (1) has adopted the common law, analogy-driven
approach (a.k.a. "analogous claim" test) to determine whether a claim is
directed to an abstract idea, and (2) has instructed us "to examine earlier
cases in which a similar or parallel descriptive nature can be seen-what
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prior cases were about, and which way they were decided." Amdocs (Israel)
Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) (citing
Elec. Power Grp., 830 F.3d at 1353-54; accordUSPTO Memorandum, July
2015 Update: Subject Matter Eligibility, 3 (July 30, 2015),
https://www.uspto.gov/sites/default/files/documents/ieg-july-2015-
update.pdf (instructing examiners that "a claimed concept is not identified as
an abstract idea unless it is similar to at least one concept that the courts
have identified as an abstract idea").
The PTO has acknowledged that the Federal Circuit's common law,
analogy-driven approach (a.k.a. "analogous claim" test) was effective soon
after Alice, but recently concluded that approach has since become
impractical as the growing body of Federal Circuit precedent has become
increasing more difficult for the Office and Examiners to apply in a
predictable manner. In particular, the PTO has issued a new § 101
Memorandum that governs all patent-eligibility analysis under Alice and
§ 101 effective as of January 7, 2019. See 2019 Revised Patent Subject
Matter Eligibility Guidance, 84 Fed. Reg. 50, 52, Jan. 7, 2019 ("PTO§ 101
Memorandum"). In this § 101 Memorandum, the PTO has synthesized, for
purposes of clarity, predictability, and consistency, key concepts identified
by the courts as abstract ideas to explain that the "abstract idea" exception
includes the following three groupings:
( 1) Mathematical concepts-mathematical relationships, mathematical
formulas or equations, mathematical calculations;
(2) Mental processes----concepts performed in the human mind
(including an observation, evaluation, judgment, opinion); and
(3) Certain methods of organizing human activity-fundamental
economic principles or practices (including hedging, msurance,
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mitigating risk); commercial or legal interactions (including
agreements in the form of contracts; legal obligations; advertising,
marketing or sales activities or behaviors; business relations);
managing personal behavior or relationships or interactions
between people (including social activities, teaching, and
following rules or instructions).
PTO§ 101 Memorandum, 84 Fed. Reg. at 52. According to the PTO§ 101
Memorandum, "[ c ]laims that do not recite [subject] matter that falls within
these enumerated groupings of abstract ideas should not be treated as
reciting abstract ideas," except in rare circumstances. Even if the claims
recite any one of these three groupings of abstract ideas, these claims are
still not "directed to" a judicial exception (abstract idea), and thus are patent-
eligible, if "the claim as a whole integrates the recited judicial exception into
a practical application of that Uudicial] exception." See PTO§ 101
Memorandum, 84 Fed. Reg. at 53. "[I]ntegration into a practical
application" requires an additional element or a combination of additional
elements in the claim to 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
exception. See PTO§ 101 Memorandum, 84 Fed. Reg. at 53-55.
For example, limitations that are indicative of "integration into a
practical application" include:
1) Improvements to the functioning of a computer, or to any other
technology or technical field-see MPEP § 2106.05(a);
2) Applying the judicial exception with, or by use of, a particular
machine-see MPEP § 2106.05(b);
3) Effecting a transformation or reduction of a particular article to
a different state or thing- see MPEP § 2106.05( c ); and
4) Applying or using the judicial exception in some other
meaningful way beyond generally linking the use of the judicial
exception to a particular technological environment, such that
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the claim as a whole is more than a drafting effort designed to
monopolize the exception - see MPEP § 2106. 05 ( e ).
See PTO§ 101 Memorandum, 84 Fed. Reg. at 53-55.
In contrast, limitations that are not indicative of "integration into a
practical application" include:
1) Adding the words "apply it" ( or an equivalent) with the judicial
exception, or mere instructions to implement an abstract idea on
a computer, or merely uses a computer as a tool to perform an
abstract idea - see MPEP § 2106.05(±);
2) Adding insignificant extra-solution activity to the judicial
exception-see MPEP § 2106.05(g); and
3) Generally linking the use of the judicial exception to a
particular technological environment or field of use - see
MPEP § 2106.05(h).
See PTO§ 101 Memorandum, 84 Fed. Reg. at 54--55 ("Prong Two").
Examiner's Determination of Patent-Ineligibility
In rejecting claims 1-5, 7, 8, 10-12, 14, 15, and 17-19 under
35 U.S.C. § 101, the Examiner determines these claims are generally
directed to an abstract idea of updating a user health record between a
central data store and a local data store upon authenticating the user. Ans.
13. The Examiner also determines that the claims include limitations that
are considered "mental processes" and analogous or similar to concepts of
(1) "comparing new and stored information and using rules to identify
options" as discussed in SmartGene (SmartGene, Inc. v. Advanced
Biological Labs., SA, 852 F. Supp. 2d 42 (D.D.C. 2012), aff'd 555 F. App'x
950 (Fed. Cir. 2014)); (2) "collecting and comparing known information" as
discussed in Classen; ( Classen Immunotherapies Inc. v. Biogen IDEC, 659
F.3d 1057 (Fed. Cir. 2011)); and (3) "obtaining and comparing intangible
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data" as discussed in CyberSource ( CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011)). Id.
The Examiner further determines that the claims fail to amount to
"significantly more than the judicial exception" or contain an "inventive
concept" because ( 1) "the additional elements when considered both
individually or as an ordered combination do not amount to significantly
more than the abstract idea"; (2) the additional elements beyond the abstract
ideas are generic computer components, such as a computing device, an
authenticated terminal, a user ID card, a central data store, a user health
record, and a database (i.e., local data store), implemented to perform
generic functions that "are well-understood, routine and conventional
activities to one of ordinary skill in the art"; and (3) "[t]here is no indication
that the combination of elements improves the functioning of a computer or
improves any other technology." Ans. 14; Final Act. 3.
Appellants' Contentions of Patent-Eligibility & Analysis
At the outset, Appellants contend the Examiner has not established a
prima facie case of patent ineligibility under 35 U.S.C. § 101 because the
Examiner ( 1) "has failed to identify an abstract idea in the claims, as
required by Federal Circuit precedent"; (2) overlooked the "directed to"
inquiry which requires an analysis of the claims, considered in light of the
specification, based on whether their character as a whole is directed to an
abstract idea; and (2) failed to explain why a precedential case is reasonably
tied to an abstract idea. App. Br. 5-7; Reply Br. 2-3.
These arguments are not persuasive. First, we recognize that the
Examiner "failed to identify an abstract idea in the claim" in the Final
Action, but has since identified such an abstract idea in the Examiner's
Answer. In particular, we agree with the Examiner that the claims are
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generally directed to an abstract idea of updating a user health record
between a central data store and a local data store upon authenticating the
user. Ans. 13. See Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed.
Cir. 2012) (holding that patent eligibility is a question of law that is
reviewable de novo ).
Second, the Federal Circuit has repeatedly noted that "the prima facie
case is merely a procedural device that enables an appropriate shift of the
burden of production." Hyatt v. Dudas, 492 F.3d 1365, 1369 (Fed. Cir.
2007) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). The
court has held that the USPTO carries its procedural burden of establishing a
prima facie case when its rejection satisfies the requirements of 35 U.S.C.
§ 132 by notifying the applicant of the reasons for rejection, "together with
such information and references as may be useful in judging of the propriety
of continuing the prosecution of [the] application." In re Jung, 637 F.3d
1356, 1362 (Fed. Cir. 2011). Thus, all that is required of the Office is that it
set forth the statutory basis of the rejection in a sufficiently articulate and
informative manner as to meet the notice requirement of 35 U.S.C. § 132.
Id.; see also Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990)
(Section 132 "is violated when a rejection is so uninformative that it
prevents the applicant from recognizing and seeking to counter the grounds
for rejection."). Appellants do not contend that the Examiner's rejection
under 35 U.S.C. § 101 cannot be understood or that the Examiner's
rejection, otherwise, fails to satisfy the notice requirements of 35 U.S.C.
§ 132. Indeed, Appellants' understanding of the rejection is clearly
manifested by their response as set forth in the briefs.
Lastly, the Examiner was required to review all claims at some level
of generalization and determine whether those claims are directed to an
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abstract idea under Alice step 1. Because there was no single definition of
an abstract idea at the time, the Examiner was required "to examine earlier
cases in which a similar or parallel descriptive nature can be seen-what
prior cases were about, and which way they were decided." Amdocs, 841
F.3d at 1294 (citing Elec. Power Grp., 830 F.3d at 1353-54; accordUSPTO
Memorandum, JULY 2015 UPDATE: SUBJECT MATTER ELIGIBILITY, 3 (July
30, 2015). In this case, the Examiner did just what he was required to do
under the USPTO Memorandum i.e., analyzed the claims under Alice step 1
consistent with the guidance set forth in the USPTO's "2014 Interim
Guidance on Patent Subject Matter Eligibility," 79 Fed. Reg. 74618 (Dec.
16, 2014), in effect at the time the rejection was made, i.e., on Mar. 18,
2016.
With respect to Appellants' argument regarding the "directed to"
inquiry under Alice step 1, we address that argument separately in the
context of Alice step 1 inquiry and the newly published PTO § 101
Memorandum, 84 Fed. Reg. at 53, herein below.
Alice/Mayo-Step 1 (Abstract Idea)
Turning to the first step of the Alice inquiry, Appellants contend the
Examiner erred in determining that the claims are directed to an abstract idea
of "comparing new and stored information and using rules to identify
options" under SmartGene. App. Br. 6, 8. In particular, Appellants argue
the Examiner's reliance on SmartGene is misplaced because (i) "SmartGene
is a nonprecedential decision," (ii) the Examiner's reliance is in conflict with
USPTO Guidance3 instructing examiners to "avoid relying upon or citing
3 Robert W. Bahr, Recent Subject Matter Eligibility Decisions, USPTO
Memorandum (Nov. 2, 2016), available at
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non-precedential decisions [(e.g., SmartGene)] unless the facts of the
application under examination uniquely match the facts at issue in the non-
precedential decision," and (iii) the facts of the case on appeal do not match
with those of SmartGene. App. Br. 8-10. According to Appellants, "the
claims are not analogous to SmartGene" and the steps recited in the claims
cannot be performed mentally because (i) claims 1 and 7 recite a computer
storage media including several hardware elements that cannot be performed
mentally, and (ii) claim 14 recites a system comprising "a user identification
card," "an authenticated terminal," and "a datastore" and, as such, does not
recite "method steps that may be performed mentally." App. Br. 10-11.
Appellants further argue "the claims are directed to patent eligible
subject matter because they describe a technological solution to a
technological problem similar to the patent eligible claims in McRO"
(McRO, Inc. v. Bandai Namco Games America, Inc., 837 F.3d 1299 (Fed.
Cir. 2016) ). App. Br. 11 ( emphasis omitted). In particular, Appellants argue
the claims address "the problem of maintaining, updating, and consolidating
electronic health records between a central datastore and local databases"-
"a specific problem related to the conventional industry technology of
electronic medical records," and provides a "seamless integration of a user's
electronic health record with a plurality of facilities having authenticated
terminals" for "the updating and maintenance of the user's electronic health
record." Id. at 13. According to Appellants, "[b ]ecause the claims present
specific computer implemented methods that establish a technological
solution to the technological problem of maintaining local copies of user
https://www.uspto.gov/sites/default/files/documents/McRo-Bascom-
Memo.pdf.
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health records, they are similar to the claims in McRO, and thus, are directed
to patent eligible subject matter." Id.
Appellants' arguments are not persuasive. At the outset, we note
Appellants' system claim 14 is no different from method claims 1 and 7 and,
as such, are treated the same way under Alice. Alice, 573 U.S. at 226. In
particular, the Supreme Court has long "warn[ ed] us against" interpreting
§ 101 "in ways that make patent eligibility 'depend simply on the
draftsman's art."' Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66, 72 (2012) (quoting Parker v. Flook, 437
U.S. 584, 593 (1978) ("[t]he concept of patentable subject matter under
§ 101 is not 'like a nose of wax, which may be turned and twisted in any
direction."')). To hold otherwise would have exalted "form over substance."
Flook, 437 U.S. at 590. Like the claims in Alice, Appellants' system claim
14 reciting hardware components configured to perform the same functions
recited in method claims 1 and 7 add nothing of substance to the underlying
abstract idea-these claims are also patent-ineligible under§ 101. Likewise,
the Federal Circuit's decision in SmartGene, while non-precedential,
remains instructive and provides a basis for the common law, claim analogy-
driven approach to determine whether a patent claim is directed to an
"abstract idea" under the first step of the Alice inquiry before the PTO § 101
Memorandum.
However, the newly published PTO § 101 Memorandum is now
governing all patent-eligibility analysis under Alice and § 101 effective as of
January 7, 2019. In particular, the PTO has synthesized, for purposes of
clarity, predictability, and consistency, the "abstract idea" exception to limit
to three categories of abstract ideas as outlined PTO § 101 Memorandum, 84
Fed. Reg. at 54--55.
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Contrary to Appellants' arguments, Appellants' claims and
Specification describe, "updating a patient's health record" between a
central data store and a local data store upon authenticating the user, via a
user identification card. Spec. ,r 4; see also Abstract, and Figures 4--6. As
correctly recognized by the Examiner (Ans. 13), maintaining consistency of
"a patient's health record" between a central data store and a database (local
data store) is an abstract idea. The steps recited in Appellants' claims 1, 7,
and 14, such as (1) "determining that the user health record was not
previously stored on a database"; (2) "using the identification information to
determine a portion of the user health record to select for storing as a local
copy of the user health record on the database"; (3) "requesting ... the
portion of the user health record to download and store as the local copy of
the user health record on the database"; (4) "storing the local copy of the
user health record on the database"; and (5) "requesting updates to the local
copy of the user health record in response to ... identification information
from the user identification card" are nothing more than "mental processes"
that could be performed by a human using a pen and paper ( via reconciling
differences between two copies of a patient's health record, regardless
whether these copies are in paper form or in electronic form}-a subject
matter that falls within the abstract ideas identified by the PTO § 101
Memorandum. See CyberSource, 654 F.3d at 1372-73 ("[A] method that
can be performed by human thought alone is merely an abstract idea and is
not patent-eligible under[§] 101."); see also In re Comiskey, 554 F.3d 967,
979 (Fed. Cir. 2009) ("[M]ental processes----or processes of human
thinking-standing alone are not patentable even if they have practical
application."); Gottschalkv. Benson, 409 U.S. 63, 67 (1972) ("Phenomena
of nature, ... mental processes, and abstract intellectual concepts are not
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patentable, as they are the basic tools of scientific and technological work."
(Emphasis added)). Additionally, mental processes remain unpatentable
even when automated to reduce the burden on the user of what once could
have been done with pen and paper. CyberSource, 654 F.3d at 1375 ("That
purely mental processes can be unpatentable, even when performed by a
computer, was precisely the holding of the Supreme Court in Gottschalk v.
Benson.").
For example, steps of "determining that the user health record was not
previously stored"; "select[ing] [a portion of the user health record] for
storing as a local copy of the user health record"; "requesting ... the portion
of the user health record to download and store as the local copy of the user
health record on the database"; and "storing the local copy of the user health
record" as recited in Appellants' method claim 1, can be performed by a
healthcare employee who simply reviews a patient's health record and
records the same. Similarly, step of "requesting updates to the local copy of
the user health record in response to ... identification information from the
user identification card" can also be performed by the same healthcare
employee who reviews and asks for an update in order to generate a training
plan on paper. The remaining steps of "receiving identification information
from a user identification card at an authenticated terminal" and
"determining whether a connection with a user health record for the user at a
central data store is established" are required when performed by generic
computer components. See CyberSource, 654 F.3d at 1375.
In essence, Appellants' claims seek to automate "pen and paper
methodologies" to conserve human resources and minimize errors. This is a
quintessential "do it on a computer" patent: it acknowledges data from one
data store (e.g., first book) that was previously collected is compared with
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data in another data store (e.g., local book), and simply proposes copying the
same in another data store ( e.g., local book) and doing so with a computer.
See University of Florida Research Foundation v. General Electric (Fed.
Cir. 20180-1284, February 26, 2019). The Federal Circuit has held such
claims are directed to abstract ideas. See, e.g., Intellectual Ventures I LLC v.
Capital One Fin. Corp., 850 F.3d 1332, 1340 (Fed. Cir. 2017) (holding
abstract claims "directed to ... collecting, displaying, and manipulating
data"); Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353-54 (Fed.
Cir. 2016) (holding abstract claims directed to "collecting information,
analyzing it, and displaying certain results of the collection and analysis").
That the automation of updating a "patient's health record" between a
central data store and a local data store can be advantageously beneficial and
even laudable to users (subscribers), but it does not render it any less
abstract.
We also discern no additional element ( or combination of elements)
recited in Appellants' claims 1-5, 7, 8, 10-12, 14, 15, and 17-19 that
integrates the judicial exception into a practical application. See PTO § 101
Memorandum, 84 Fed. Reg. at 54--55 ("Prong Two"). For example,
Appellants' claim l's additional elements (e.g., "computing device,"
"authenticated terminal," "central data store" and "database") do not (1)
improve the functioning of a computer or other technology, (2) are not
applied with any particular machine (except for a generic computer), (3) do
not effect a transformation of a particular article to a different state, and ( 4)
are not applied in any meaningful way beyond generally linking the use of
the judicial exception to a particular technological environment, such that
the claim as a whole is more than a drafting effort designed to monopolize
the exception. See MPEP §§ 2106.05(a}-(c), (e}-(h).
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Appellants' reliance on McRO is misplaced. For example, McRO 's
'576 patent (U.S. Patent No. 6,307,576) describes computer software for
matching audio to a 3D animated mouth movement to provide lip-synced
animation. McRO 's claims contain (i) specific limitations regarding a set of
rules that "define[] a morph weight set stream as a function of phoneme
sequence and times associated with said phoneme sequence" to enable
computers to produce "'accurate and realistic lip synchronization and facial
expressions in animated characters"' (McRO, 837 F.3d at 1313) and, when
viewed as a whole, are directed to (ii) a "technological improvement over
the existing, manual 3-D animation techniques" that uses "limited rules in a
process specifically designed to achieve an improved technological result in
conventional industry practice." McRO, 837 F.3d at 1316.
In contrast to McRO, "updating a patient's health record" between a
central data store and a local data store upon authenticating the user, via a
user identification card (Spec. ,r 4; Abstract, and Figures 4---6) does not
improve the computer functionality or provide any "technological solution to
the technological problem of maintaining local copies of user health
records," as Appellants argue. App. Br. 13.
For these reasons, we agree with the Examiner's determination that
Appellants' claims 1-5, 7, 8, 10-12, 14, 15, and 17-19 are directed to an
abstract idea that is not integrated into a practical application.
Alice/Mayo-Step 2 (Inventive Concept)
In the second step of the Alice inquiry, Appellants argue (1) the
Examiner failed to evaluate whether the claims contain an "inventive
concept"; and (2) like the claims in (i) DDR Holdings, LLC v. Hotels.com,
L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014), (ii) BASCOM Glob. Internet
Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016); and (iii)
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Application 13/112,636
Amdocs (Isr.) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016),
their claims provide a technical solution to a technological problem, and
recite "specific, unconventional technological solution to a technological
problem" in the field of medical record technology. App. Br. 18.
Appellant's arguments are not persuasive. Instead, we discern no
additional element or combination of elements recited in Appellants'
independent claims 1, 7, and 14 that contains any "inventive concept" or
adds anything "significantly more" to transform the abstract concept into a
patent-eligible application. Alice, 573 U.S. at 221. For example,
Appellants' abstract idea of "updating a patient's health record" between a
central data store and a local data store upon authenticating the user, via a
user identification card (Spec. ,r 4; Abstract, and Figures 4---6) is not rooted
in computer technology. Nor does it (1) provide any technical solution to a
technical problem as required by DDR Holdings; (2) provide any particular
practical application as required by BASCOM; or (3) entail an
unconventional technological solution to a technological problem as
required by Amdocs. Instead, Appellants' invention simply uses generic
computer components ( a computer receiving device, processing server,
database device, transmitting device), shown, for example, in Figures 1, 2B,
and 3B, to perform the abstract idea of "updating a patient's health record."
Ans. 14.
As recognized by the Examiner, the use of generic computer
components, such as a computing device, authenticated terminal, central
data store and database) does not alone transform an otherwise abstract idea
into patent-eligible subject matter. Ans. 14. As our reviewing court has
observed, "after Alice, there can remain no doubt: recitation of generic
computer limitations does not make an otherwise ineligible claim patent-
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eligible." DDR, 773 F.3d at 1256 (citing Alice, 573 U.S. at 223). Moreover,
Appellants have not shown any specific limitation in claims 1, 7, and 14
beyond the judicial exception that is not "well-understood, routine, and
conventional" in the field. See MPEP § 2106.05( d).
Because Appellants' claims 1, 7, and 14 are directed to a patent-
ineligib le abstract concept and do not recite something "significantly more"
under the second prong of the Alice analysis, we sustain the Examiner's
rejection of claims 1-5, 7, 8, 10-12, 14, 15, and 17-19 under 35 U.S.C.
§ 101.
DECISION
For the above reasons, the Examiner's obviousness rejection and
patentineligibilityrejectionofclaims 1-5, 7, 8, 10-12, 14, 15, and 17-19
are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a)(l )(iv).
AFFIRMED
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Application 13/112,636
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT SCOTT ACKERSON, BRIAN ROBERT CARTER, and
CLAY PATTERSON
Appeal 2017-011761
Application 13/112,636
Technology Center 3600
Before JEAN R. HOMERE, RAMA S. ELLURU, and HUNG H. BUI,
Administrative Patent Judges.
HOMERE, Administrative Patent Judge, dissenting-in-part.
I write separately to voice my disagreement with the concurring
decision ("concurring dee.") affirming the Examiner's patent-ineligibility
rejection. In particular, the concurring decision asserts agreement with the
Examiner that the claims are directed to the abstract idea of "updating a user
health record between a central data store and a local store upon
authenticating the user." Concurring Dec. 19-21 (citing Ans. 13).
According to the concurring decision, the claims are therefore directed to the
abstract idea of maintaining consistency between the databases, a method
that can be performed by human thought alone, otherwise known as a mental
process. Id. ( citing CyberSource, Comiskey, Gottschalk.) From that
conclusion, I respectfully dissent. At the outset, it is noted that the
concurring decision mischaracterizes the abstract idea alleged by the
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Application 13/112,636
Examiner. Although the cited portion of the Examiner's Answer refers to
the language identified in the concurring decision, the Examiner explicitly
identifies the alleged abstract idea as "the concept of comparing new and
stored information and using rules to identify options." Ans. 13. Further, it
is noted that the concurring decision's statement of the abstract idea merely
summarizes the claimed language as opposed to identifying specific
language in the claim that is directed to the alleged mental process as
required by the PTO § 101 Memorandum set forth in the concurring
decision. Instead, I agree with Appellants that the Examiner erred in
concluding that the claims are directed to the abstract idea of "comparing
new and stored information and using rules to identify options." App. Br. 6.
I agree with Appellants that the Examiner's conclusion is devoid of any
meaningful analysis supported by a precedential authority as to how any of
the recited steps of receiving, determining, establishing, using, requesting,
and storing is directed to the alleged abstract idea. Id. at 6-9. I also note
that the Examiner's conclusion suffers the same deficiencies as the
concurring decision in failing to identify particularly the claim language
associated with the alleged abstract idea. As persuasively argued by
Appellants, the claimed subject matter is directed to using a user
identification card at an authenticated terminal to connect with a central data
store from which identified user health data is downloaded to a local store
associated with the authenticated user terminal. App. Br. 12-13. Therefore,
I agree with Appellants that the claims presently on appeal are directed to a
specific computing environment for maintaining consistency between a local
copy of a user's health record at an authenticated computing device and
another copy at central store by updating, consolidating, and reconciling
differences therebetween. Id. As correctly noted by Appellants, because the
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Application 13/112,636
claims provide a seamless integration of a user's electronic health record at
health facilities using an authenticated device to facilitate connection with a
central data store from which updated data is downloaded, the claim is
directed to performing self-improvement of the computing environment. Id.
at 13. As such, I agree with Appellants that the claimed recitations are not
directed to a method of organizing human activities, or mental steps.
Furthermore, even if the claimed functions were directed to the cited abstract
idea alleged in the concurring decision, the claim integrates the noted
judicial exception into a practical application because it recites an additional
element reflecting an improvement in the functioning of a computer, or an
improvement to other technology or technical field. See DDR Holdings,
LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258-59 (Fed. Cir. 2014). In
particular, the claim recitation "requesting, from the central data store, the
portion of the user health record to download and store as the local copy of
the user health record on the database associated with the authenticated
terminal" implements the recited functions with a particular machine or
manufacture that is integral to the claim to thereby improve the integrity and
functionality of databases in the distributed database environment.
Accordingly, I agree with Appellants that the claims are directed to patent
eligible subject matter.
For the foregoing reasons, I would not sustain the Examiner's patent
ineligibility rejection of claims 1-5, 7, 8, 10-12, 14, 15, and 17-19, which
recite similar limitations.
4