Ex Parte Antony et al

Patent Trial and Appeal Board

Jul 31, 2017

13844332 (P.T.A.B. Jul. 31, 2017)

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.
13/844,332 03/15/2013 Sandeep Antony 3.0001.1 3668
103968 7590
Ryan Alley IP
(General Docket)
P.O. Box 87
Alexandria, VA 22313
EXAMINER
BURGESS, JOSEPH D
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
08/02/2017 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):
office @ alleylegal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SANDEEP ANTONY, SCOTT AFZAL, and
DAVID HORROCKS
Appeal 2017-001676
Application 13/844,332
Technology Center 3600
Before ELENI MANTIS MERCADER, SCOTT B. HOWARD, and
JASON M. REPKO, Administrative Patent Judges.
REPKO, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2017-001676
Application 13/844,332
STATEMENT OF THE CASE
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 21—27, 30-35, and 42-44. App. Br. 13.2 Claims 1—20,
28, 29, and 36-41 have been canceled. We have jurisdiction under 35
U.S.C. § 6(b). We affirm.
THE INVENTION
Appellants’ invention manages healthcare information in a healthcare
network. Spec. 15.
Claim 21 is reproduced below:
21. A method of managing healthcare information with a
notification system networked with a subscriber and a
computerized health information exchange including a memory
storing a master patient index, the method comprising:
receiving, at the notification system, subscriber parameters
identifying a plurality of patients from a first subscriber, wherein
the subscriber parameters include format and frequency
information for the first subscriber;
receiving, at the notification system, subscriber parameters
identifying a plurality of patients from a second subscriber,
wherein, the subscriber parameters include format and frequency
information for the second subscriber, and
1 Appellants identify the real party in interest as Audacious Inquiry LCC.
App. Br. 1.
2 Throughout this opinion, we refer to (1) the Final Rejection (“Final Act.”)
mailed September 17, 2015, (2) the Appeal Brief (“App. Br.”) filed February
29, 2016, which was supplemented by the Appeal Brief filed June 27, 2016
replacing the defective Claims Appendix and Related Appeals sections, (3)
the Examiner’s Answer (“Ans.”) mailed September 9, 2016, and (4) the
Reply Brief (“Reply Br.”) filed November 9, 2016.
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the first and the second subscribers are separate entities that are
at least one of a healthcare provider, a governmental
organization, and an insurance provider;
storing, with a computer processor in the notification system, at
least portions of the subscriber parameters for the first subscriber
in the master patient index of the health information exchange
that are not already stored in the master patient index so that
patient information for at least one of the plurality of patients
from the subscriber parameters for the first subscriber is newly
associated with corresponding information for the at least one of
the plurality of patients already stored in the master patient index;
storing, with the computer processor in the notification system,
at least portions of the subscriber parameters for the second
subscriber in the master patient index of the health information
exchange that are not already stored in the master patient index
so that patient information for at least one of the plurality of
patients from the subscriber parameters for the second subscriber
is newly associated with corresponding information for the at
least one of the plurality of patients already stored in the master
patient index;
receiving, with the computer processor in the notification
system, healthcare information in an electronic format from the
health information exchange,
wherein, the healthcare information includes
administrative HL7 messages generated in response to an
admission, discharge, or transfer of a patient from a
healthcare provider serviced by the health information
exchange as well as other messages, and
the healthcare information as received from the health
information exchange includes information from the
subscriber parameters for at least one of the first and the
second subscribers previously stored in the computerized
health information exchange;
determining, with the computer processor in the notification
system, if the healthcare information indicates an admission,
transfer, or discharge of a patient identified by the subscriber
parameters for at least one of the first and the second subscriber;
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Application 13/844,332
for healthcare information that indicates an admission,
transfer, or discharge for a patient identified by the subscriber
parameters for the first subscriber based on the determining,
providing, with the computer processor in the network, a
notification to the first subscriber,
wherein, the notification identifies the patient
identified by the subscriber parameters for the first
subscriber and includes information from the subscriber
parameters for at least one of the first and the second
subscribers,
the providing to the first subscriber is executed in
the format and at the frequency indicated in the format and
frequency information for the first subscriber, and
the providing to the first subscriber is not executed
for healthcare information that does not indicate an
admission, transfer, or discharge for a patient identified by
the subscriber parameters for the first subscriber based on
the determining; and
for healthcare information that indicates an admission, transfer,
or discharge for a patient identified by the subscriber parameters
for the second subscriber based on the determining, providing,
with the computer processor in the network, a notification to the
second subscriber,
wherein, the notification identifies the patient identified by
the subscriber parameters for the second subscriber and
includes information from the subscriber parameters for at
least one of the first and the second subscribers,
the providing to the second subscriber is executed in the
format and at the frequency indicated in the format and
frequency information for the second subscriber, and
the providing to the second subscriber is not executed for
healthcare information that does not indicate an
admission, transfer, or discharge for a patient identified by
the subscriber parameters for the second subscriber based
on the determining.
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Application 13/844,332
THE REJECTION
Claims 21—27, 30-35, and 42-44 stand rejected under 35U.S.C. § 101
as directed to patent-ineligible subject matter. Final Act. 2—3.
ANALYSIS
The Examiner has rejected claims 21 and 353 under 35 U.S.C. § 101
because the claims as a whole are directed to an abstract idea similar to those
identified by the courts. Final Act. 2—3; Ans. 3. The Examiner further finds
that the claims do not contain an inventive concept sufficient to transform
the abstract idea into patent-eligible subject matter. Final Act. 3^4.
For the reasons discussed below, Appellants have not persuaded us of
error.
I
The Supreme Court’s two-step framework guides our analysis. See
Alice Corp. Pty. Ltd. v. CLS Bank Inti, 134 S. Ct. 2347, 2355 (2014).
According to step one, “[w]e must first determine whether the claims at
issue are directed to a patent-ineligible concept,” such as an abstract idea.
Id.
Appellants argue that the claims are not directed to an abstract idea.
App. Br. 14—17; Reply Br. 1—6. According to Appellants, the claimed
invention solves the problem of “data overwhelm” specific to computerized
healthcare networks. App. Br. 20; Reply Br. 3. To solve this problem,
Appellants explain that the invention is directed to using a computer to filter
this large amount of data. Reply Br. 3.
3 Appellants argue claims 21 and 35 together as representative of claims 21—
27, 30-35, and 42^44. See App. Br. 13.
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Application 13/844,332
We agree with Appellants’ characterization of the problem and
solution—i.e., filtering numerous messages. See, e.g., id. We, however,
disagree that this feature distinguishes Appellants’ concept from the abstract
ideas identified by the courts. Similarly, the Federal Circuit has explained
that “filtering content is an abstract idea because it is a longstanding, well-
known method of organizing human behavior, similar to concepts previously
found to be abstract.” BASCOM Global Internet Servs. v. AT&T Mobility
LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016).
Unlike the invention held patent eligible in BASCOM (id. at 1350—52),
claims 21 and 35 do not recite an improvement to a computer’s capabilities
to perform the filtering. Appellants disagree and contend that the claims
recite a unique technological solution to a specific network problem.
App. Br. 18—23; Reply Br. 3—6. In Appellants’ view, the claimed invention
improves computerized healthcare, computer networks, and data quality.
App. Br. 22—23; Reply Br. 4—6. According to Appellants, the claims require
a physically present patient and an electronically formatted notification.
App. Br. 14—16; Reply Br. 4. Also, in Appellants’ view, the claims cannot
be performed mentally. App. Br. 16. Appellants argue that the Examiner
generalizes the claims, and in doing so, the Examiner ignores the notification
step and the notification’s unique content. Id. at 16—17.
When considering claims purportedly directed to an improvement of
computer functionality, the inquiry becomes “whether the focus of the
claims is on the specific asserted improvement in computer capabilities . . .
or, instead, on a process that qualifies as an ‘abstract idea’ for which
computers are invoked merely as a tool.” Enfish, LLC v. Microsoft Corp.,
822 F.3d 1327, 1335-36 (Fed. Cir. 2016).
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Here, the limitations are directed to the type of data filtered, not the
filtering steps. In particular, claim 21 begins with five steps for receiving
and storing data. The method then requires a determination. To be sure,
these limitations are quite detailed. These details restrict what the recited
parameters represent, who the subscribers are, how the data organized, what
the healthcare information includes, and what the notification identifies.
Although we take into account these limitations in determining the claim’s
character as a whole, “[information as such is an intangible” and collecting
information limited to particular content is within the realm of abstract ideas.
See Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353—54 (Fed.
Cir. 2016).
Overall, we are not persuaded that Appellants’ invention is an
improvement to a computer’s capabilities in filtering or sending data.
Rather, considering the claim’s character as a whole, the computer is merely
invoked as a tool for receiving, filtering or sending a particular type of data.
Accord Ans. 6—7. Accordingly, the Examiner did not err in concluding that
claims 21 and 35 are directed to an abstract idea. Final Act. 2—3; Ans. 3-4.
II
Because the claims are “directed to an abstract idea,” we analyze the
claims to determine if the limitations, when considered both “individually
and as an ordered combination” contain an “inventive concept” sufficient to
transform the claimed “abstract idea” into patent-eligible subject matter.
Alice, 134 S. Ct. at 2355-58.
Appellants argue that the claims are limited to a particular networking
environment and specific data types. App. Br. 18—19, 24—25; Reply Br. 6.
According to the Appellants, the claimed invention improves network
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function and the computers are specific. App. Br. 22—24. We are not
persuaded.
Considering the limitations individually, we begin with the
determining step. The determining step operates on “administrative HL7
messages.” This type of message is conventionally used to provide
information about a patient. Spec. Tflf 2—3; see also Spec. 128 (discussing
“standard” ADT messages); Spec. 134 (discussing the “Direct standard” and
HL7 format). Thus, this known data type cannot confer the inventive
concept.
To be sure, the claims recite a “notification system,” “health
information exchange,” “network,” and a “computer processor.” Unlike the
patent-eligible filtering in BASCOM, the filtering performed here does not
involve an inventive distribution of function between the network and
processor. See 827 F.3d at 1352 (discussing the specific location for the
filtering system and role of networking accounts in concluding that the
claims did not preempt the abstract idea’s use). Although Appellants argue
that the configuration requires specific interfaces (App. Br. 23—24;
Reply Br. 6—7), how these interfaces carry out the determination is not
claimed.
Instead, claim 21 merely recites “determining, with the computer
processor in the notification system, if the healthcare information indicates
an admission, transfer, or discharge of a patient identified by the subscriber
parameters for at least one of the first and the second subscriber” (emphasis
added). Claim 35 recites a similar limitation. The “determining” step
covers the result, not a way of achieving it. Essentially, the claim covers all
ways of determining if the information indicates the recited event. The only
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technical limitation in the determining step is the use of a generic computing
processor in a “system.” Accord Ans. 5—6. That is, the claims do not recite
a specific, inventive way of enabling a computer to filter the messages.
Rather, claims 21 and 35 broadly recite determining without providing steps
for how that determination is carried out.
Turning now to the remaining limitations, considering each
individually, the five steps for receiving and storing data are also well
understood, routine, conventional data gathering steps, which do not make
the claims patent eligible. See OIP Techs., Inc. v. Amazon.com, Inc., 788
F.3d 1359, 1363—64 (Fed. Cir. 2015). Likewise, the computer’s role in
providing notifications does not add an “inventive concept” under step two
of the Alice framework. See buySAFE, Inc. v. Google, Inc., 765 F.3d 1350,
1355 (Fed. Cir. 2014) (explaining that “computers in Alice were receiving
and sending information over networks connecting the intermediary to the
other institutions involved, and the Court found the claimed role of the
computers insufficient.”). These steps are merely limited to sending and
receiving data of a particular type. The limitations drawn to the data type
specify what the recited parameters represent, who the subscribers are, how
the data organized, what the healthcare information includes, and what the
notification identifies.
Because this particular data is used, Appellants argue that the claim is
meaningfully limited. Reply Br. 7—8. But given the broad, abstract manner
in which the filtering is claimed, this type of limitation is not sufficient to
supply an inventive concept under step two of the Alice framework. See
Alice, 134 S. Ct. at 2358. Here, these additional limitations on the data only
limit the abstract idea of filtering data to a particular field of use. See Parker
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v. Flook, 437 U.S. 584, 590 (1978) (limiting a computer-implemented
abstract idea to the petrochemical industry was insufficient), cited in Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1298
(2012).
In sum, the claimed steps, considered individually, do not contain an
inventive concept.
Considering the limitations as an ordered combination, the recited
method and system uses a computer to filter numerous messages with
conventional technology. See Final Act. 2. Regarding this problem and
solution, Appellants argue that the solution is rooted in computer technology
and unique to HIE computer networks. App. Br. 18—21; see also
Reply Br. 3 (discussing “data overwhelm”). In particular, ADT messages
are too numerous and Appellants’ solution is to filter them using a
subscriber’s parameters. App. Br. 20. But “the fact that the required
calculations could be performed more efficiently via a computer does not
materially alter the patent eligibility of the claimed subject matter.”
Bancorp Servs., LLC v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d
1266, 1278 (Fed. Cir. 2012); see also OIP Techs., 788 F.3d at 1363 (“relying
on a computer to perform routine tasks more quickly or more accurately is
insufficient to render a claim patent eligible.”). Indeed, a computer can
likely review the recited messages and notify subscribers faster than a
human. We, however, agree with the Examiner (Ans. 6—7) that using a
computer in this conventional way does not supply an inventive concept.
Lastly, Appellants argue that the claims do not preempt all ways of
selectively notifying subscribers about a patient’s healthcare encounters.
App. Br. 24—25; Reply Br. 9—10. According to Appellants, the claims are
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limited to specific data types that meaningfully limit the nature of the recited
actions. Reply Br. 9. We disagree and further note that “[wjhile preemption
may signal patent ineligible subject matter, the absence of complete
preemption does not demonstrate patent eligibility.” Ariosa Diagnostics,
Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015); see also
Ans. 8.
Nevertheless, claims 21 and 35 are result-focused and broadly
functional, as discussed above. Although limited to the recited data types,
the solution is only constrained to a particular field of use, which is not
sufficient render an otherwise unpatentable concept eligible. See Flook, 437
U.S. at 590 (explaining that “the Pythagorean theorem would not have been
patentable, or partially patentable, because a patent application contained a
final step indicating that the formula, when solved, could be usefully applied
to existing surveying techniques”). In this way, the claims here do implicate
concerns over preemption.
In sum, considering the limitation both individually and as an ordered
combination, we agree with the Examiner (Final Act. 3) that the claims do
not contain an inventive concept sufficient to transform the claimed abstract
idea into patent-eligible subject matter.
Therefore, Appellants have not persuaded us of error in the rejection
of representative claims 21 and 35 under 35 U.S.C. § 101, and dependent
claims 22—27, 30-34, and 42-44, which are not argued separately with
particularity (see App. Br. 13, 25—26; Reply Br. 1—9).
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DECISION
We affirm the Examiner’s rejection of claims 21—27, 30—35, and 42—
44.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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