Ex Parte Bechtold et al

Patent Trial and Appeal Board

May 16, 2018

13754786 (P.T.A.B. May. 16, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
131754,786 01/30/2013
23628 7590 05/18/2018
WOLF GREENFIELD & SACKS, P.C.
600 ATLANTIC A VENUE
BOSTON, MA 02210-2206
FIRST NAMED INVENTOR
Joseph Bechtold
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.
A0928.70015USOO 3201
EXAMINER
SEREBOFF, NEAL
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
05/18/2018 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):
Patents_eOfficeAction@WolfGreenfield.com
WGS_eOfficeAction@WolfGreenfield.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEPH BECHTOLD, JESSICA BLEVINS,
STEVEN KELCH, NEIL DOWGUN, LUIS GUTIERREZ,
LEAH HAAS, KRISTEN MCCARTHY,
CHRISTOPHER PAPAZIAN,
TAKESHI TOYOHARA, and
MICHELLE VINCOW
Appeal2017-003023
Application 13/754,786
Technology Center 3600
Before ROBERT E. NAPPI, JOHN P. PINKERTON, and
JOYCE CRAIG, Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-25, which are all of the claims pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 According to Appellants, the real party in interest is athenahealth, Inc.
App. Br. 2.
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Application 13/754,786
INVENTION
Appellants' application relates to data reconciliation from trusted
sources. Abstract. Claim 1 is illustrative and reads as follows:
1. A method of processing data in a practice management system, the
method comprising:
storing, by a healthcare information management component of the
practice management system, patient data for a plurality of patients of a
plurality of medical practices, information identifying at least one data
source as a trusted source, and a plurality of trusted source rules, each of
which specifies a reconciliation behavior for clinical data received from a
trusted source associated with the trusted source rule, wherein the practice
management system includes a billing management component configured
to facilitate the submission of claims filed by the plurality of medical
practices to a plurality of payers and a communications management
component configured to interact with the healthcare information
management component and the billing management component to facilitate
interactions with the plurality of patients on behalf of the plurality of
medical practices;
receiving, by the healthcare information management component,
clinical data from a source external to the healthcare information
management component;
determining, by at least one processor, whether the received clinical
data includes trusted source data, wherein determining whether the received
clinical data includes trusted source data comprises identifying based, at
least in part, on information associated with the received clinical data, the
source of the clinical data and determining based, at least in part, on the
information identifying at least one data source as a trusted source, whether
the identified source of the received clinical data is a trusted source; and
in response to determining that the received clinical data includes
trusted source data, automatically reconciling the trusted source data with
the patient data stored by the healthcare information management
component, wherein automatically reconciling the trusted source data with
the patient data comprises:
determining whether the identified trusted source is associated at least
one trusted source rule of the plurality of trusted source rules stored by the
healthcare information management component; and
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performing a reconciliation action based on the at least one trusted
source rule associated with the identified trusted source in response to
determining that the trusted source is associated with the at least one trusted
source rule.
REJECTIONS
Claims 1-25 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to judicial exception to patentable subject
matter. Final Act. 2.
Claims 1-8, 10-17, 19-23, and 25 stand rejected under pre-AIA
35 U.S.C.§ 103(a) as unpatentable over the combination of Mathur (US
2008/0109447 Al, published May 8, 2008), Garrett et al. (US
2008/0027965 Al, published Jan. 31, 2008) ("Garrett"), and Ohlsson (US
2008/0147436 Al, published June 19, 2008). Final Act. 3-20.
Claims 9, 18, and 24 stand rejected under pre-AIA 35 U.S.C. § 103(a)
as unpatentable over the combination of Mathur, Garrett, Ohlsson, and
Hasan et al. (US 2010/0179836 Al, published July 15, 2010) ("Hasan").
Final Act. 20-21.
ANALYSIS
Rejection of Claims 1-25 under 35 USC§ 101
We have reviewed the rejections of claims 1-25 in light of
Appellants' arguments that the Examiner erred. We have considered in this
decision only those arguments Appellants actually raised in the Briefs. Any
other arguments Appellants could have made, but chose not to make, in the
Briefs are waived. See 37 C.F.R. § 41.37(c)(l)(iv).
Appellants' arguments are not persuasive of error. We agree with and
adopt as our own the Examiner's findings of facts and conclusions as set
forth in the Answer (3-5) and in the Action (2, 22-23) from which this
appeal was taken. We provide the following explanation for emphasis.
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In concluding the rejected claims are directed to patent ineligible
subject matter under 35 U.S.C. § 101, the Examiner concluded independent
claim 1 is directed to the abstract idea of reconciling patient records by
receiving data, comparing the received data to stored data, and reconciling
the data using rules, which is similar to comparing new and stored
information and using rules to identify options, and using categories to
organize, store, and transmit information. Final Act. 2. The Examiner
further concluded the additional claim elements do not provide meaningful
limitations sufficient to transform the abstract idea into a patent eligible
application of the abstract idea such that the claim amounts to significantly
more than the abstract idea itself. Id.
The Supreme Court in Alice identifies a two-step framework for
determining whether claimed subject matter is judicially-excepted from
patent eligibility under§ 101. Alice Corp. Pty. Ltd. v. CLS Bank Int'!, 134 S.
Ct. 2347, 2355 (2014). The first step in the analysis is to "determine
whether the claims at issue are directed to one of those patent-ineligible
concepts," such as an abstract idea. Id. (citing Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 132 S. Ct. 1289, 1296-97 (2012)). If the claims are
directed to a patent-ineligible concept, the second step in the analysis is 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.
(quoting Mayo, 132 S. Ct. at 1298, 1297). 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
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significantly more than a patent upon the [ineligible concept] itself."' Id.
(alteration in original) (quoting Mayo, 132 S. Ct. at 1294).
Appellants argue claims 1-25 as a group. App. Br. 8, 13. We select
claim 1 as representative of the group. 37 C.F.R. § 41.50(b).
Turning to the first step of the Alice inquiry, we agree with the
Examiner that limitations of claim 1 are directed to a series of steps related
to reconciling patient records by receiving data, comparing the received data
to stored data, and reconciling the data using rules. Final Act. 2. We also
agree that, here, the concept of reconciling patient records by receiving data,
comparing the received data to stored data, and reconciling the data using
rules is similar to the concept of comparing new and stored information and
using rules to identity options, which is an abstract idea. Id. at 2; SmartGene
Inc. v. Adv. Bio. Labs. SA, 555 F. App'x 950 (Fed. Cir. 2014).
In SmartGene, the Federal Circuit concluded claims were patent
ineligible because they did "no more than call on a 'computing device,' with
basic functionality for comparing stored and input data and rules, to do what
doctors do routinely." SmartGene, 555 F. App'x at 954. In the instant case,
the recited "patient data" and "clinical data" are nothing more than data used
in an algorithm process that employs a computer (i.e., "processor") to
reconcile the data using rule-based processes. See Final Act 2. The claims
at issue in SmartGene relied upon "expert rules" for "'evaluating and
selecting' from a stored 'plurality of different therapeutic treatment
regimens."' SmartGene, 555 F. App'x at 955. The "expert rules" in
SmartGene are analogous to the "plurality of trusted source rules, each of
which specifies a reconciliation behavior for clinical data received from a
trusted source associated with the trusted source rule," recited in claim 1.
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We also agree with the Examiner that the concept of reconciling
patient records by receiving data, comparing the received data to stored data,
and reconciling the data using rules is similar to the abstract idea of using
categories to organize, store, and transmit information. Final Act. 2. In
Cyberfone, the Court held that "using categories to organize, store, and
transmit information is well-established," and "the well-known concept of
categorical data storage, ... the idea of collecting information in classified
form, then separating and transmitting that information according to its
classification, is an abstract idea that is not patent-eligible." Cyberfone
Systems, LLC v. CNN Interactive Group, Inc., 558 F. App'x 988, 992 (Fed.
Cir. 2014). Here, as in Cybeifone, information is collected and organized or
manipulated, because the limitations outline obtaining patient data from
more than one source, determining whether data is from a trusted source,
and reconciling the data based on a trusted source rule.
Appellants contend the Examiner erred because the claims are not
directed to the alleged abstract idea. App. Br. 9. Appellants argue the
claims are directed to "determining whether received clinical data is from a
trusted source, and automatically reconciling trusted source data in the
received clinical data with stored patient data only after determining that the
received clinical data is from trusted source," which is not an abstract idea.
Id. at 10.
Appellants' arguments are not persuasive at least because they do not
persuasively explain how "determining whether received clinical data is
from a trusted source, and automatically reconciling trusted source data in
the received clinical data with stored patient data only after determining that
the received clinical data is from trusted source" substantively differs from
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the abstract idea identified by the Examiner. Appellants also have not
persuasively distinguished the claims from those found patent ineligible in
SmartGene and Cyberfone. Here, the advance the claims purport to make is
a process of gathering and analyzing information, and "not any particular
assertedly inventive technology for performing those functions." Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016).
For these reasons, we are not persuaded of error in the Examiner's
determination that the claims are directed to the abstract idea of reconciling
patient records by receiving data, comparing the received data to stored data,
and reconciling the data using rules. See Final Act. 2.
Turning to the second step of the Alice inquiry, we find nothing in
claim 1 that adds anything "significantly more" to transform the abstract
concept of reconciling patient records by receiving data, comparing the
received data to stored data, and reconciling the data using rules into a
patent-eligible application. Alice, 134 S. Ct. at 2357.
Appellants contend the claims are "necessarily rooted" in a computer
technology and address a technological challenge confined to computer
technology. App. Br. 10-11 (citing DDR Holdings, LLC v. Hotels.com,
L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014)). Appellants argue the
Specification describes that the problem arises within a specific computer-
based context, namely, "automatic reconciliation of clinical data received
electronically from a source external to the practice management system."
Id. at 11. Appellants also argue the Specification "describes a new solution
that overcomes these limitations of existing solutions with a different
technological approach." Id.
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We disagree with Appellants. None of the functions recited in
Appellants' claim 1 provide, and nowhere in the Specification can we find,
any description or explanation as to how these data manipulation steps are
intended to provide a "solution ... necessarily rooted in computer
technology in order to overcome a problem specifically arising in the realm
of computer networks," as explained by the Federal Circuit in DDR
Holdings, 113 F.3d at 1257. To the contrary, we agree with the Examiner
that Appellants' Specification explicitly describes a way of automating a
manual process, which is an improvement over a manual system. See Ans.
4--5 (citing Spec. i125).
Appellants further argue the "determining" step recited in claim 1
improves the functioning of the computer discussed in the Specification.
App. Br. 13. Appellants, however, have not persuasively explained how
determining whether data is from a trusted source shows claim 1 "is rooted
in computer technology, ... addresses a problem unique to and rooted in
that computer technology, and ... includes a different technological solution
than was presented in prior technological solutions and that improves the
functioning of a computer as compared to those earlier technological
solutions," as Appellants contend. Id. at 13. To the contrary, there is no
indication that the implementation of the claimed steps, including the
"determining" and "automatically reconciling" steps, requires something
apart from the well-known, routine, and conventional computer functions of
receiving, analyzing, and manipulating data. See Final Act. 2. Accordingly,
we fail to see how the claimed invention is something other than the generic
computer implementation of the abstract idea, which is insufficient to
transform the nature of the claim into a patent-eligible application. As
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recognized by the Supreme Court, "the mere recitation of a generic
computer cannot transform a patent-ineligible abstract idea into a patent-
eligible invention." See Alice, 134 S. Ct. at 2358, 2359 (concluding claims
"simply instruct[ing] the practitioner to implement the abstract idea of
intermediated settlement on a generic computer" are not patent eligible).
Because Appellants' independent claim 1 is directed to a patent-
ineligible abstract concept and does not recite something "significantly
more," we sustain the Examiner's rejection of claim 1, and of grouped claims
2-25, under 35U.S.C.§101.
Rejections of Claims 1-25 under 35 USC§ 103(a)
Because claims 1-25 are directed to patent-ineligible subject matter,
we do not reach the prior art rejections of those claims. See In re Comiskey,
554 F.3d 967, 973 (Fed. Cir. 2009) (declining to reach the prior art rejection
when claims are barred at the threshold by § 101 ); Ex parte Gutta, 93
USPQ2d 1025, 1036 (BPAI 2009) (precedential) (same).
DECISION
We affirm the rejection of claims 1-25 as directed to patent ineligible
subject matter under the judicial exception to 35 U.S.C. § 101.
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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