Ex Parte Betses et al

Patent Trial and Appeal Board

Jul 21, 2017

13090946 (P.T.A.B. Jul. 21, 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.
13/090,946 04/20/2011 Dimitri G. Betses 7306362001 3571
121159 7590 07/25/2017
Kacvinsky Daisak Bluni PLLC-Boston
Scott T. Bluni
50 Doaks Lane
Marblehead, MA 01945
EXAMINER
PORTER, RACHEL L
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
07/25/2017 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):
docketing @ kdbfirm. com
pcurrie @ kdbfirm.com
bbonneville @ kdbfirm .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DIMITRI G. BETSES, SIDHARTH S. SAHNI,
CHRISTOPHER L. COX, and TIMOTHY A. DUCHARME
Appeal 2016-002889
Application 13/090,946
Technology Center 3600
Before ALLEN R. MacDONALD, JOSEPH P. LENTIVECH, and
DAVID J. CUTITTAII, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-002889
Application 13/090,946
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1—7, 10-17, 19, and 20.1 We have jurisdiction under 35 U.S.C.
§ 6(b).
Appellants ’ Invention
This invention is directed to “a method for improved adherence to a
medication therapy.” Spec. 11.
Exemplary Claim
Exemplary claim 1 under appeal reads as follows.
1. A method for managing medication adherence of a
patient, comprising the steps of:
receiving patient information comprising patient name,
telephone number, and prescription information;
storing the patient information in one or more databases;
identifying a probability that the patient will not adhere
to a medication therapy based on the patient information or
combinations of patients and medications;
placing a first telephone call to the patient after the
patient receives the filled prescription;
placing a second telephone call to the patient, using an
interactive voice response system, prior to the day that the
prescription is due for a refill; and placing a third telephone
call to the patient in the event the prescription is past due for a
refill.
1 Claims 8, 9, and 18 were canceled previously.
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Appeal 2016-002889
Application 13/090,946
Rejections
The Examiner rejected claims 1—7, 10-17, 19, and 20 under 35 U.S.C.
§ 103(a) as being unpatentable over Akers et al. (US 6,112,182, Aug. 29,
2000), Denenberg et al. (US 6,464,142 Bl, Oct. 15, 2002), and Hanina et al.
(US 2011/0153361 Al, June 23, 2011). Final Act. 2-15.
The Examiner rejected claims 1—7, 10-17, 19, and 20 under 35 U.S.C.
§ 101 for being directed to patent-ineligible subject matter. Ans. 2—5.
Appellants ’ Contentions2
1. Appellants contend the Examiner erred in rejecting claims
under 35 U.S.C. § 103(a) because the combination of Akers, Denenberg, and
Hanina fails to teach placing a telephone call to a patient “prior to the day
that the prescription is due for a refill,” as recited in claim 1. App. Br. 9—12;
Reply Br. 5—8.
2. Appellants contend one of ordinary skill in the art would not be
motivated to combine Denenberg with Akers and Hanina. App. Br. 12.
3. Appellants contend the Examiner erred in rejecting claim 1
under 35 U.S.C. § 101 because:
[T]he claim limitation “identifying a probability that the
patient will not adhere to a medication therapy based on
the patient information or combinations of patients and
medications” is not an abstract idea at least because it is
not a mere mathematical relationship and the claim
limitation “placing a second telephone call to a the
patient, using an interactive voice response system, prior
to the day that the prescription is due for a refill” at least
2 Separate patentability, in compliance with 37 C.F.R. § 41.37(c)(iv), is not
argued for claims 2—7, 10-17, 19, and 20. Except for our ultimate decision,
these claims are not discussed further herein.
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Appeal 2016-002889
Application 13/090,946
because it not merely organizing human activity.
Appellants further submit that these limitations are
significantly more than an abstract idea.
Reply. Br. 4.
Issues on Appeal
Did the Examiner err in rejecting claims 1—7, 10—17, 19, and 20 as
being unpatentable under 35 U.S.C. § 103(a)?
Did the Examiner err in rejecting claims 1—7, 10—17, 19, and 20 for
being directed to patent-ineligible subject matter under 35 U.S.C. § 101?
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments (Appeal Brief and Reply Brief) that the Examiner has erred.
We disagree with Appellants’ conclusions and concur with the conclusions
reached by the Examiner. Except as noted below, we adopt as our own
(1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken and (2) the reasons set forth by the Examiner
in the Examiner's Answer in response to Appellants’ Appeal Brief. We
highlight the following additional points.
Rejection of Claims Under 35 U.S.C. § 103(a)
The Examiner finds Denenberg teaches “placing a second telephone
call to the patient, using an interactive voice response system, prior to the
day that the prescription is due for a refill,” as recited in claim 1. Final
Act. 3^4; Ans. 5. The Examiner finds Denenberg’s system calls patients to
remind them to pick up their prescriptions. Final Act. 3^4; Ans. 5—6; see
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Application 13/090,946
Denenberg col. 16,11. 10—23. The Examiner further finds Denenberg
teaches a predictive refill system that predictively refills a prescription
before it is due for refill. Ans. 5—6; see Denenberg col. 18,11. 45—53.
Supported by Denenberg’s disclosure that predictive refills would benefit
from Denenberg’s automated call system, we agree with the Examiner that
one of ordinary skill in the art would appreciate that a predictively refilled
prescription could be placed into Denenberg’s system resulting in a patient
being called prior to the day the prescription is due for refill. Final Act. 3^4;
Ans. 5—6; Denenberg col. 18,11. 45—53.
Appellants argue (contention 1) the Examiner erred because “nowhere
does Denenberg suggest or teach that the patient be called before the refill is
fulfilled.” App. Br. 12. As explained by the Examiner, Appellants’
argument is not commensurate with the scope of the claims. Ans. 5. We
agree. The claims recite placing a call “prior to the day that the prescription
is due for a refill.” Claims App’x. The claims neither recite nor require that
the call be placed prior to refilling the prescription. See id.
Appellants additionally argue the Examiner erred because “[a]n
already-refilled prescription is obviously not due for a refill and is clearly
not contemplated by the present claims.” Reply Br. 7. Appellants further
argue the claims “do not recite language like ‘day the prescription was
originally due for a refill,’ but rather the plain, present-tense language ‘day
the prescription is due for a refill.’” (emphasis original) Id. These
arguments are not persuasive. We find no condition in the claims that the
day that the prescription is due for a refill is variable dependent upon
preceding events. Accordingly we are not persuaded of Examiner error.
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Regarding above contention 2, Appellants contend one of ordinary
skill in the art would not be motivated to combine Denenberg with Akers
and Hanina because, unlike their invention, “[t]he problems addressed by the
systems and methods in Denenberg occur after a prescription has already
been filled.” App. Br. 12.
We are not persuaded that the Examiner erred based on the problem
addressed by Denenberg. “In determining whether the subject matter of a
patent claim is obvious, neither the particular motivation nor the avowed
purpose of the patentee controls ... [A]ny need or problem known in the
field of endeavor at the time of invention and addressed by the patent can
provide a reason for combining the elements in the manner claimed.” KSR
Inti Co. v. Teleflex, Inc., 550 U.S. 419-20 (2007).
Moreover, the Examiner provides sufficient articulated reasoning with
a rational underpinning to support the legal conclusion of obviousness. See
KSR at 418. Specifically, the Examiner finds it would have been obvious to
modify Akers’ system for managing a patient’s adherence to prescribed
medication by placing calls to the patient utilizing an interactive voice
response system, as taught by Denenberg. Final Act. 4; Ans. 7. The
motivation proffered by the Examiner for combining the references is to
provide a reminder to the patient that a prescription is due. Final Act. 4;
Ans. 7. Appellants’ argument that the problems addressed by Denenberg
occurs after a prescription has already been filled, does not reveal error in
the Examiner’s articulated reasoning and proffered motivation. See App.
Br. 12. Accordingly, we are not persuaded of Examiner error.
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Rejection of Claims Under 35 U.S.C. §101
Under 35 U.S.C. § 101, a patent may be obtained for “any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof.” The Supreme Court has “long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable.” Alice Corp. v.
CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014) (quoting Ass’n for Molecular
Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013)). The
Supreme Court in Alice reiterated the two-step framework previously set
forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132
S. Ct. 1289, 1300 (2012), “for distinguishing patents that claim laws of
nature, natural phenomena, and abstract ideas from those that claim patent-
eligible applications of these concepts.” Alice, 134 S. Ct. at 2355. The first
step in that analysis is to “determine whether the claims at issue are directed
to one of those patent-ineligible concepts,” such as an abstract idea. If the
claims are not directed to a patent-ineligible concept, the inquiry ends.
Otherwise, the inquiry proceeds to the second step where the elements of the
claims are considered “individually and ‘as an ordered combination’ to
determine whether the additional elements ‘transform the nature of the
claim’ into a patent-eligible application.” Alice, 134 S. Ct. at 2355 (quoting
Mayo, 132 S. Ct. at 1298, 1297). We, therefore, look to whether the claims
focus on a specific means or method that improves the relevant technology
or are instead directed to a result or effect that itself is the abstract idea and
merely invoke generic processes and machinery. See Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
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Step 1
Turning to the first part of the Alice!Mayo analysis, the Examiner
concludes claim 1 is directed to “managing medication adherence of a
patient,” which is considered to be an abstract idea insomuch as such activity
is considered both a mathematical relationship and a method of organizing
human activity. Ans. 2—3. Specifically, the Examiner concludes the step of
identifying a probability that the patient will not adhere to a medication
therapy based on the patient information or combinations of patients and
medications is a mathematical relationship. Id. And the Examiner
concludes the steps of placing a first telephone call to the patient after the
patient receives the filled prescription; placing a second telephone call to the
patient, using an interactive voice response system, prior to the day that the
prescription is due for a refill; and placing a third telephone call to the
patient in the event the prescription is past due for a refill, are a method for
organizing human activity. Id.
Claim 1 is a method comprising receiving and storing patient
information, identifying a probability that the patient will not adhere to a
medication therapy based on the patient information, and placing telephone
calls to the patient based upon specific conditions. Claim App’x, 15. Our
reviewing court has held a similar method, collecting and analyzing records
of human activity to identify misuse and notifying a user when misuse has
been identified, to be directed to an abstract idea. FairWarning IP, LLC v.
Iatric Systems, Inc., 839 F.3d 1089 (Fed. Cir. 2016).
Appellants argue (contention 3) that identifying a probability that the
patient will not adhere to a medication therapy based on the patient
information, is not an abstract idea at least because it is not a mere
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mathematical relationship. Reply Br. 4. Appellants further argue placing a
second telephone call to the patient based on a specific event is not an
abstract idea at least because it not merely organizing human activity.” Id.
We are not persuaded by these arguments.3 Appellants’ arguments
misstate the Examiner’s rejection as being founded on the claims reciting
“merely ‘organizing human activity’” (Reply. Br. 4) and being “a mere
mathematical relationship” (Id.). First, the Examiner did not base the
rejection on Appellants’ argued “mere” or “merely” foundation. Rather, the
Examiner relied on the two step Alice!Mayo analysis. The Court’s
Alice!Mayo test has no such “mere” or “merely” requirement. Under,
Alice!Mayo, a claim having more than the mere abstract idea is not sufficient
by itself to render the claim statutory. Rather, significantly more is required.
Appellants essentially list elements of claim 1 without any persuasive
explanation of how the elements either individually, or as an ordered
combination, amount to an inventive concept that converts an abstract idea
into patent-eligible subject matter. We therefore determine that the elements
of claim 1, considered both individually and as an ordered combination, do
not transform claim 1 into patent-eligible subject matter. Accordingly, we
agree with the Examiner that claim 1 is directed to an abstract idea.
Step 2
Turning to the second part of the Alice!Mayo analysis, Appellants
argue identifying a probability that the patient will not adhere to a
medication therapy based on the patient information is more than an abstract
3 Although Appellants’ arguments conflate the two steps of the Alice!Mayo
test, we treat these arguments as being directed to step 1 of the test.
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Application 13/090,946
idea because probabilities of non-adherence may be compiled into a
database, and the database may be queried with any of a number of factors,
such as number of refills required for adherence, time since previous fill, or
the specific age and condition of the patient, in order to determine the non­
adherence probability. Reply Br. 4—5. Appellants further argue that placing
the second telephone call is more than an abstract idea because it requires
that the call be placed with an interactive voice response system. Id. at 5.
Regarding the use of a database and an interactive voice response
system, Appellants have neither shown, nor provided sufficient evidence,
that the claimed steps of receiving and storing patient information,
identifying a probability that the patent will not adhere to a medication
therapy based on the patient information, and placing telephone calls based
upon specific conditions, are technically accomplished such that they are not
routine, conventional functions of a database and an interactive voice
response system. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716
(Fed. Cir. 2014) (quoting Alice Corp. v. CLS BankInt’l, 134 S. Ct. 2347,
2357 (2014)) (“Instead, the claimed sequence of steps comprises only
‘conventional steps, specified at a high level of generality,’ which is
insufficient to supply an ‘inventive concept’”); BASCOM Glob. Internet
Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016)
(“An abstract idea on ‘an Internet computer network’ or on a generic
computer is still an abstract idea”); Alice Corp. v. CLSBanklnt’l, 134 S. Ct.
2347, 2358 (2014) (“the mere recitation of a generic computer cannot
transform a patent-ineligible abstract idea into a patent-eligible invention”;
Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016)
(quotation omitted) (“We have repeatedly held that such invocations of
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computers and networks that are not even arguably inventive are insufficient
to pass the test of an inventive concept in the application of an abstract
idea”); Intellectual Ventures ILLC v. Capital One Fin. Corp., 850 F.3d
1332, 1341 (Fed. Cir. 2017) (“Rather, the claims recite both a generic
computer element—a processor—and a series of generic computer
‘components’ that merely restate their individual functions—i.e., organizing,
mapping, identifying, defining, detecting, and modifying. That is to say,
they merely describe the functions of the abstract idea itself, without
particularity. This is simply not enough under step two”); Intellectual
Ventures, 792 F.3d at 1370 (“[T]he ‘interactive interface’ simply describes a
generic web server with attendant software, tasked with providing web pages
to and communicating with the user’s computer”). Moreover, the
integration of existing communication systems and devices to existing
processes of facilitating a commercial relationship between a product
provider and a recipient of those products, as claimed, appears to be a
“‘well-understood, routine, conventional activity’ previously known to the
industry.” Content Extraction & Transmission LLC v. Wells Fargo Bank,
776 F.3d 1343, 1347—48 (Fed. Cir. 2014) (quoting Mayo, 132 S. Ct. at
1294). And “simply appending conventional steps specified at a high level
of generality, to laws of nature, natural phenomena, and abstract ideas
cannot make those laws, phenomena, and ideas patentable.” Mayo, 132 S.
Ct. at 1300. None of the limitations of the claims, viewed “both individually
and as an ordered combination,” amount to significantly more than the
judicial exception, sufficiently to transform the nature of the claims into
patent-eligible subject matter. See Alice, 134 S. Ct. at 2355 (quoting Mayo,
132 S. Ct. at 1297).
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CONCLUSION
The Examiner has not erred in rejecting claims 1—7, 10—17, 19, and 20
for being unpatentable under 35 U.S.C. § 103(a).
The Examiner has not erred in rejecting claims 1—7, 10—17, 19, and 20
for being directed to patent-ineligible subject matter under 35 U.S.C. § 101.
DECISION
The Examiner’s rejection of claims 1—7, 10-17, 19, and 20 is
affirmed.
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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