Ex Parte Baeke

Patent Trials and Appeals Board

Jun 19, 2019

13736057 - (D) (P.T.A.B. Jun. 19, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/736,057 01/07/2013
97066 7590 06/21/2019
Innovation Capital Law Group, LLP
19800 MacArthur Blvd.
Suite 280
Irvine, CA 92612
FIRST NAMED INVENTOR
John L. Baeke
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.
BAEl-PAUOl 3850
EXAMINER
KWONG, CHO YIU
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
06/21/2019 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):
processing@icaplaw.com
vlin@icaplaw.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN L. BAEKE 1
Appeal2018-001695
Application 13/736,057
Technology Center 3600
Before CARLL. SILVERMAN, JAMES W. DEJMEK, and
JOYCE CRAIG, Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the final
rejection of claims 1, 2, 4--12, 14--22, and 26-28, which are all of the claims
pending in the application. Appellant has canceled claims 3, 13, and 23-25.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellant, the real party in interest is John L. Baeke. App.
Br. 4.
Appeal2018-001695
Application 13/736,057
STATEMENT OF THE CASE
The Invention
Appellant's disclosed embodiments and claimed invention relate to
providing insurance for a surgical procedure involving implantation of a
foreign material into a human body. Spec. 1.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal [bracketed labels added]:
1. A method of providing post-operative insurance for a
surgical procedure involving implantation of a foreign material
into a human body, comprising:
[a] underwriting an insurance policy to cover an adverse
event, including health and aesthetic complications and side
effects, resulting from the surgical procedure that may occur
from a completion date of the surgical procedure up to at least
one year from the completion date of the procedure, where the
step of underwriting the insurance policy further comprising:
[b] collecting a first set of data into a first
database, the first set of data including a scope of
coverage benefits, a coverage period, and occurrences of
a health and aesthetic complications and side effects
arising from completed surgical procedures involving
implantation of a foreign material into a human body
amongst a group of patients over a period of time,
[ c] using computer means to process the first set of
data to predetermine premium prices, terms, coverage
benefits and exclusions, wherein a bimodal distribution
curve to determine the coverage benefits and the
premium prices for covering the adverse event, and
[ d] publishing a first report on the premium prices,
terms, coverage benefits and exclusions;
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[ e] determining eligibility for enrollment of a patient
undergoing the surgical procedure by collecting personal
information on the patient into a second database and using
computer means to process the personal information against
available insurance; and
[f] enrolling the patient under the insurance policy.
Rejections on Appeal2
Claims 1, 2, 4--12, 14--22, and 26-28 stand rejected under 35 U.S.C.
§ 101 as directed to patent-ineligible subject matter. Final Act. 5---6.
Claims 1, 2, 4--10, 19-22, and 26-28 stand rejected under 35 U.S.C.
§ 112, second paragraph, as indefinite. Final Act. 8-9.
Claims 7, 17, and 19-22 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over the combination of CosmetAssure, available at
http://web.archive.org/web/20050309003836/http://www.cosmetassure.com/
ca-complications.html, Markman (US 2004/0267579 Al; published Dec. 30,
2004), FDA SUMMARY PANEL MEMORANDUM (Mentor P030053,
dated Mar. 2, 2005), and Hasan et al. (US 2010/0179836 Al; published July
15, 2010) ("Hasan").
ANALYSIS
Rejection of Claims 1, 2, 4-12, 14-22, and 26--28 under§ 101
Section 101 of the Patent Act provides that "any new and useful
process, machine, manufacture, or composition of matter, or any new and
useful improvement thereof' is patent eligible. 3 5 U.S. C. § 101. But the
Supreme Court has long recognized an implicit exception to this section:
2 In the Answer, the Examiner withdrew rejections of claims 1, 2, 4--10, 19-
22, and 26-28 under 35 U.S.C. § I03(a), as well as a rejection of claim 5
under 35 U.S.C. § 112, first paragraph. Ans. 3.
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Application 13/736,057
"Laws of nature, natural phenomena, and abstract ideas are not patentable."
Alice Corp. v. CLSBankint'l, 573 U.S. 208,216 (2014) (quotingAss'nfor
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
To determine whether a claim falls within one of these excluded categories,
the Court has set out a two-part framework. The framework requires us first
to consider whether the claim is "directed to one of those patent-ineligible
concepts." Alice, 573 U.S. at 217. If so, we then examine "the elements of
[the] 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." Alice, 573 U.S. at 217 (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78, 79 (2012)).
That is, we examine the claim for an "inventive concept," "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, 573 U.S. at 217-18 ( alteration in original) ( quoting
Mayo, 566 U.S. at 72-73).
The Patent Office recently revised its guidance about this framework.
See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg.
50 (Jan. 7, 2019) ("Revised Guidance"). Under the Revised Guidance, to
decide whether a claim is directed to an abstract idea, we evaluate whether
the claim (1) recites subject matter that falls within one of the abstract idea
groupings identified in the Revised Guidance and (2) fails to integrate the
recited abstract idea into a practical application. See Revised Guidance, 84
Fed. Reg. at 51, 54. If the claim is directed to an abstract idea, as noted
above, we then determine whether the claim has an inventive concept. The
Revised Guidance explains that when making this determination, we should
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consider whether the additional claim elements add "a specific limitation or
combination of limitations that are not well-understood, routine,
conventional activity in the field" or "simply append[] well-understood,
routine, conventional activities previously known to the industry, specified
at a high level of generality." Revised Guidance, 84 Fed. Reg. at 56.
Step 2A(i): Does the Claim Recite a Judicial Exception?
The Examiner determined that claim 1 recites a fundamental
economic practice, which falls within the "certain methods of organizing
human activity" abstract idea grouping identified in the Revised Guidance.
See Final Act. 5; Revised Guidance, 84 Fed. Reg. at 52. For the reasons
explained below, and because Appellant did not challenge the Examiner's
determination, we agree with the Examiner that the claim 1 recites a
fundamental economic practice and, thus, an abstract idea.
Claim 1 recites a method that includes limitations [a]-[ fJ reproduced
in full above. These limitations recite "providing post-operative insurance
for a surgical procedure." See App. Br. 27. The written description suggests
that providing insurance is a longstanding business practice. See, e.g., Spec.
2 ( disclosing that patients desire an affordable insurance plan and "a plan
which will cover almost every eventuality"). Providing insurance is an
economic act that is not meaningfully different from economic acts that
courts have determined are fundamental economic practices. The Federal
Circuit has held that managing an insurance policy is a fundamental
economic practice, i.e., an abstract idea. See, e.g., Bancorp Servs., L.L. C. v.
Sun Life Assur. Co. of Canada (U.S.), 687 F.3d 1266, 1280 (Fed. Cir. 2012)
( concluding that "managing a stable value protected life insurance policy by
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performing calculations and manipulating the results" is an abstract idea);
Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336,
1344--45 (Fed. Cir. 2013) (finding ineligible claims directed to generating
rule-based tasks for processing an insurance claim). An integral part of
providing an insurance policy is processing data related to the policy and
determining a premium amount to be paid by the policy holder.
We determine that claim 1 recites a fundamental economic practice,
one of the certain methods of organizing human activity identified in the
Revised Guidance, see Revised Guidance, 84 Fed. Reg. at 52. Claim 1
therefore recites an abstract idea. The limitations that make up the
fundamental economic practice are:
[a] underwriting an insurance policy to cover an adverse
event, including health and aesthetic complications and side
effects, resulting from the surgical procedure that may occur
from a completion date of the surgical procedure up to at least
one year from the completion date of the procedure, where the
step of underwriting the insurance policy further comprising:
[b] collecting a first set of data ... , the first set of
data including a scope of coverage benefits, a coverage
period, and occurrences of a health and aesthetic
complications and side effects arising from completed
surgical procedures involving implantation of a foreign
material into a human body amongst a group of patients
over a period of time,
[ c] ... process[ing] the first set of data to
predetermine premium prices, terms, coverage benefits
and exclusions, wherein a bimodal distribution curve to
determine the coverage benefits and the premium prices
for covering the adverse event, and
[ d] publishing a first report on the premium prices,
terms, coverage benefits and exclusions;
[ e] determining eligibility for enrollment of a patient
undergoing the surgical procedure by collecting personal
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Application 13/736,057
information on the patient into a second database and using
computer means to process the personal information against
available insurance; and
[f] enrolling the patient under the insurance policy.
Under the broadest reasonable interpretation standard, 3 we conclude
limitations [a] through [ fJ above recite steps that would ordinarily occur
when providing insurance. For example, underwriting is an operation that
generally occurs when providing insurance. Further, collecting data, using a
computer to process data, determining eligibility for enrollment, and
enrolling the insured are abstract, whether initiated person-to-person, on
paper, or using a computer.
Thus, under Step 2A(i), we agree with the Examiner that claim 1 's
method for providing post-operative insurance is a fundamental economic
practice. We conclude claim 1, as a whole, under our Revised Guidance,
recites a judicial exception of providing insurance, i.e., a fundamental
economic practice, and thus is an abstract idea.
Step 2A(ii): Judicial Exception Integrated into a Practical Application?
If the claims are directed to a patent-ineligible concept, as we
conclude above, we proceed to the "practical application" Step 2A(ii) in
which we determine whether the recited judicial exception is integrated into
a practical application of that exception by (a) identifying whether there are
any additional elements recited in the claim beyond the judicial exception( s );
and (b) evaluating those additional elements individually and in combination
3 During prosecution, claims must be given their broadest reasonable
interpretation when reading claim language in light of the specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
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to determine whether they integrate the exception into a practical
application. The additional elements in claim 1 are a "first database" and a
"computer means."
We find claim 1 recites an abstract ideas as identified in Step 2A(i),
supra, and none of the additional elements integrates the judicial exception
of providing insurance into a practical application as determined under one
or more of the relevant MPEP sections. The claim as a whole merely uses
instructions to implement the abstract idea on a computer or, alternatively,
merely uses a generic computer as a tool to perform the abstract idea. Thus,
on this record, Appellant has not shown under the guidance of Manual of
Patent Examining Procedure section 2106.05(a) ("Improvements to the
Functioning of a Computer or to Any Other Technology or Technical Field")
or section 2106.05( e )("Other Meaningful Limitations"). Nor does Appellant
advance any arguments in the Brief(s) that are directed to the Bilski
machine-or-transformation test, which would only be applicable to the
method (process) claims on appeal. See MPEP §§ 2106.05(b) (Particular
Machine) and 2106.05( c) (Particular Transformation).
Rather, Appellant argues that claim 1 uses a computer to perform
functions that are novel and nonobvious. App. Br. 14.
We are not persuaded of Examiner error because, as the Supreme
Court emphasizes, "[t]he 'novelty' of any element or steps in a process, or
even of the process itself, is of no relevance in determining whether the
subject matter of a claim falls within the§ 101 categories of possibly
patentable subject matter." Diamond v. Diehr, 450 U.S. 175, 188-89 (1981)
( emphasis added). Our reviewing court further guides that "[ e ]ligibility and
novelty are separate inquiries." Two-Way Media Ltd. v. Comcast Cable
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Application 13/736,057
Commc 'ns, LLC, 874 F.3d 1329, 1340 (Fed. Cir. 2017); see also Affinity
Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1263 (Fed. Cir. 2016)
(holding that "[ e ]ven assuming" that a particular claimed feature was novel
does not "avoid the problem of abstractness").
Appellant also argues that the "collecting," "using," and "publishing"
steps of the abstract idea amount to significantly more than the abstract idea.
App. Br. 14--15.
Appellant's argument is not persuasive because, under the Revised
Guidance, in Step 2A, prong 2, we consider whether any of the "additional
elements"- elements recited outside of the abstract idea-integrate the
abstract idea into a practical application. Appellant's argument relies on
elements that are part of the abstract idea.
Appellant further argues that the claims as a whole do not seek to tie
up any judicial exception such that others cannot practice it. App. Br. 16.
Appellant's argument is not persuasive because, "' [ w ]hile preemption
may signal patent ineligible subject matter, the absence of complete
preemption does not demonstrate patent eligibility."' Fair Warning IP, LLC,
v. Iatric Sys., Inc., 839 F.3d 1089, 1098 (Fed. Cir. 2016) (quoting Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)).
Further, "[w]here a patent's claims are deemed only to disclose patent
ineligible subject matter under the Mayo framework, as they are in this case,
preemption concerns are fully addressed and made moot." Ariosa, 788 F.3d
at 1379.
For these reasons, we conclude the abstract idea is not integrated into
a practical application, and thus the claim is directed to the judicial
exception.
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Step 2B ~ "Inventive Concept" or "Significantly More"
If the claims are directed to a patent-ineligible concept, as we
conclude above, we proceed to the "inventive concept" step. For Step 2B we
must "look with more specificity at what the claim elements add, in order to
determine 'whether they identify an "inventive concept" in the application of
the ineligible subject matter' to which the claim is directed." Affinity Labs,
838 F.3d at 1258 (quoting Electric Power Group, LLC, v. Alstom, 830 F.3d
1350, 1353 (Fed. Cir. 2016)).
The written description adequately supports the Examiner's
determination that the additional elements recited in claim 1 is conventional
and performs well-understood, routine, and conventional activities. Final
Act. 6; see Robert W. Bahr, Memorandum on Changes in Examination
Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter
Eligibility Decision (Berkheimer v. HP, Inc.) 4 at 3 (Apr. 19, 2018),
available at https://www.uspto.gov/sites/default/files/documents/memo-
berkheimer-20180419 .PDF ( explaining that a specification that describes
additional elements "in a manner that indicates that the additional elements
are sufficiently well-known that the specification does not need to describe
the particulars of such additional elements to satisfy 35 U.S.C. § 112(a)" can
show that the elements are well understood, routine, and conventional).
As evidence of the conventional nature of the recited "first database"
in claim 1, the Specification describes that "raw data pertaining to various
types of health complications and their occurrences, coverage benefits and
coverage periods may be collected and stored into a first centralized
4 Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018).
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electronic database." See Spec. 13. The Specification describes the "first
database" in a manner that indicates that the database is sufficiently well-
known that the specification does not need to describe the particulars to
satisfy 35 U.S.C. § 112(a).
Similarly, the recited "computer means" used to process data in claim
1 is described in a manner that indicates that the computer means is
sufficiently well-known that the specification does not need to describe the
particulars to satisfy 35 U.S.C. § 112(a). See Spec. 13.
Thus, because the Specification describes the additional elements
in general terms, without describing the particulars, we conclude the claim
limitations may be broadly but reasonably construed as reciting conventional
computer components and techniques, particularly in light of Appellant's
Specification, as quoted above.
Because the claims fail under both the Step 2A and Step 2B analyses,
we sustain the Examiner's § 101 rejection of independent claims 1, 11, and
19, and grouped dependent claims 2, 4--10, 12, 14--18, 20-22, and 26-28,
which fall therewith.
Rejection of Claims 7, 17, and 19-22 under§ 103(a)
Appellant contends that independent claim 19 should be allowable
over the combination of CosmetAssure, Markman, FDA, and Hasan for at
least the reasons argued for independent claims 1 and 11. App. Br. 24.
Appellant contends the Examiner erred because neither CosmetAssure nor
Markman nor FDA teaches a method of providing post-operative insurance
underwritten for a term of at least one year for a surgical procedure
involving implantation of a foreign material into a human body. Id. at 22.
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In rejecting claim 1, the Examiner found that "the length of coverage
period of an insurance" is a design choice. Final Act. 9. Appellant contends
the Examiner erred because, in the claims on appeal, an insurance term of at
least one year has specific advantages and serves a particular purpose. App.
Br. 20. In particular, Appellant argues that an insurance term of at least a
year covers "side effects," not just earlier "complications," of surgery. Id. at
19-21.
We are not persuaded that the Examiner erred. Appellant has not
persuasively rebutted the Examiner's finding of "design choice" because
Appellants' Specification does not to set forth any reasons why the using a
policy period of at least a year would result in a different function or
provide a specific novel technical advantage. Indeed, Appellant's
Specification does not distinguish between complications and side effects in
the manner argued by Appellant. See Spec. 2, 4, Fig. 1; see also In re Chu,
66 F.3d 292, 298-99 (Fed. Cir. 1995) ("design choice" is appropriate where
the applicant fails to set forth any reasons why the differences between the
claimed invention and the prior art would result in a different function).
Mere attorney arguments and conclusory statements, which are unsupported
by factual evidence, are entitled to little probative value. In re Geisler, 116
F.3d 1465, 1470 (Fed. Cir. 1997); see also In re Pearson, 494 F.2d 1399,
1405 (CCPA 1974) (attorney argument is not evidence).
Because a preponderance of the evidence supports the Examiner's
finding that the term of the insurance is a design choice, we are not
persuaded by Appellant's argument regarding the disputed limitation.
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With regard to dependent claims 7 and 22, Appellant contends Hasan
does not teach or suggest the "release of diagnostic imaging evaluation
results to a third party." App. Br. 24.
We are not persuaded by Appellant's argument. At least paragraph
453 of Hasan, cited by the Examiner (Final Act. 20, 24), teaches disclosing a
patient's medical information to the patient and "viewers authorized by the
patient." Thus, we are not persuaded the Examiner erred in finding Hasan
teaches or suggests the disputed limitation.
For these reasons, we sustain the Examiner's§ 103(a) rejection of
claims 7, 17, and 19-22.
Rejection of Claims under§ 112, Second Paragraph
The Examiner rejected claims 1, 2, 4--10, 19-22, and 26-28 as
indefinite for failing to particularly point out and distinctly claim the subject
matter which the applicant regards as the invention. Final Act. 8-9.
Because Appellant does not contest the merits of the Examiner's rejection,
we summarily sustain the Examiner's rejection.
DECISION
We affirm the Examiner's decision rejecting claims 1, 2, 4--12, 14--22,
and 26-28.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l)(iv) (2016). See
37 C.F.R. § 41.50(±).
AFFIRMED
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