Ex Parte Boehlke

Patent Trials and Appeals Board

Jun 26, 2019

12025154 - (D) (P.T.A.B. Jun. 26, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
12/025, 154
49691 7590
IP Strategies
P.O. Box 6446
Asheville, NC 28816
FILING DATE FIRST NAMED INVENTOR
02/04/2008 Raimar Boehlke
06/28/2019
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.
BSSPT34 1756
EXAMINER
LAM, ELIZA ANNE
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
06/28/2019 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):
thomas.champagne@ipstrategiespc.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAIMAR BOEHLKE
Appeal 2018-0053 86
Application 12/025,154
Technology Center 3600
Before JOHN A. JEFFERY, CATHERINE SHIANG, and BETH Z. SHAW,
Administrative Patent Judges.
SHAW, Administrative Patent Judge.
DECISION ON APPEAL 1
1 Throughout this Decision we have considered the Appeal Brief filed
August 23, 2016 ("App. Br."), Reply Brief filed May 1, 2018 ("Reply Br."),
the Examiner's Answer mailed March 2, 2018 ("Ans."), and the Non-Final
Rejection mailed Nov. 20, 2015 ("Non-Final Act).
Appeal 2018-0053 86
Application 12/025,154
Appellant2 appeals under 35 U.S.C. § 134 from a rejection of claims
2, 6-16, and 18-20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
INVENTION
The claims are directed to a methods and systems for collecting and
analyzing medical data.
Independent claims 2, 6, and 12 are reproduced below:
2. A computer-implemented method of collecting medical data
for a database, the medical data relating to symptoms, diseases, and
treatments of individual users with respect to diseases, said method
including:
A) Requesting an individual user to input data descriptive of
symptoms of a disease, and inputting the data descriptive, of
symptoms of a disease by the individual user into the memory of a
computer operationally connected to a programmable processor;
B) Requesting the individual user to input data descriptive of a
diagnosis made by a medical professional with respect to the
symptoms and the individual user, and inputting the data descriptive
of a diagnosis made by a medical professional with respect to the
symptom and the individual user by the individual user, whereby the
user is prompted to indicate whether the diagnosis is based on test
verified-lab results, or on an assumption level;
C) Requesting the individual user to input data descriptive of a
treatment received by the individual user with respect to the
symptoms and the diagnosis, and inputting the data descriptive of a
treatment received by the individual user with respect to the
symptoms and the diagnosis by the individual user;
D) Requesting the individual user to input data descriptive of
symptoms and diagnosed disease which has been successfully treated,
and inputting the data descriptive of symptoms and diagnosed disease
which has been successfully treated by the individual user;
E) Requesting the individual user to input data descriptive of
symptoms and diagnosed disease, which has not been successfully
2 According to Appellant, the present application has not been assigned, and
therefore the inventor, Raimar Boehlke, is the real party in interest.
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Application 12/025,154
treated, and inputting the data descriptive of symptoms and diagnosed
disease which has not been successfully treated by the individual user;
F) Requesting input of qualification of the treatment received,
and inputting the qualification by the individual user;
G) Storing the inputted data;
H) Requesting the individual user to input data descriptive of
resources for the treatment received, the resources comprising at least
one of:
quantities of treatment;
cost of treatment;
time of treatment; and
human resource factor,
and inputting the data descriptive of resources for the treatment
received by the individual user, thereby creating an individual user
profile, and associating the inputted data with the individual user
profile;
I) Upon request by the same or another individual user:
searching treatment with optimal / worst patient outcome
by
comparing different treatments with each other,
searching for matches in the user's profile and reporting
cases with highest or lowest overlap in in profile structure,
searching for common false diagnoses,
searching likely diseases from most to least frequent
citations in the database; and
creating a report that lists all relevant diseases thus
obtained in the database of the system, the system
differentiating between diseases that have been test-verified and
diseases that have only been assumed; and
J) Based on the report, optimizing treatment for the
individual user.
3
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6. A computer-implemented method of collecting medical data
for a database, the medical data relating to diseases, symptoms and
treatments of individual users, said method including:
A) Requesting an individual user to input attribute data for the
individual user into the memory of a computer operationally
connected to a programmable processor, the attribute data being data
which is constant during lifetime of the individual user; the attribute
data comprising at least one of date of birth;
blood group;
genetic code;
indications as to ethnic background;
indications as to hereditary diseases;
and inputting the attribute data by the individual user;
B) Requesting the individual user to input variable data for an
individual user, the variable data being data which is subject to
changes during lifetime of the individual user;
the variable data comprising at least one of
body mass index;
indications as to geographic location;
indications as to environment;
indications as to risks;
and inputting the variable data by the individual user;
C) Associating the inputted data with the individual user;
D) Storing the inputted data associated with the individual user
in the database;
E) Associating a new user profile with the stored inputted data;
F) Displaying the new user profile to the individual user for
review;
G) Requesting the individual user to input data regarding the
individual user review and inputting data regarding the individual user
review by the individual user; and
H) Upon request by the same m another individual user to
search matching epidemiological profiles,
Screening the database for matching epidemiological profiles,
and confirming their existence with yes or no, and
applying the following:
Searching treatment with optimal / worst patient outcome
by comparing different treatments with each other,
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Application 12/025,154
Searching for matches in the user's profile and report
cases with highest or lowest overlap in profile structure,
Searching for common false diagnoses, and
Searching likely diseases from most to least frequent
citations in the database and
I) creating a report that lists all relevant diseases in the database
of the system, the report differentiating between diseases that have
been test-verified and diseases that have only been assumed:
J) Based on the report, optimizing treatment for the individual
user.
12. A computer-implemented method of collecting medical data
for a database, the medical data relating to diseases, symptoms and
treatments of individual users, said method including;
A) Displaying, to an individual user, text fields comprising
data descriptive of predefined symptoms of predetermined diseases;
B) Prompting the individual user to enter data descriptive of
a disease symptom of interest to the individual user in a free text field,
which is entered into the memory of a computer operationally
connected to a programmable processor;
C) Entering, by the individual user, data descriptive of the
particular symptom in the free text field, in response to the prompting;
D) Performing a search in the database for data similar to the
data entered in the free text field;
E) If data similar to the entered data is found in the
database, discarding the entered data;
F) If data similar to the entered data is not found in the
database, initiating an evaluation process of the entered data,
prompting a system administrator, clearance manager and expert to
assume qualifying and verifying new content proposals; and
G) If the evaluation process is positive, approving the new
content proposal and entering the new content proposal into the
database.
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Application 12/025,154
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Knowlton
Heinze
Schmitt
US 2003/0204415 Al
US 6,945,254 B 1
US 7,149,756 Bl
Oct. 30, 2003
July 5, 2005
Dec. 12, 2006
Bernadette Murgue et al. West Nile Outbreak in Horses in Southern France,
2000: The Return after 35 Years, 7 EMERGING INFECTIOUS DISEASES 692-96
(2001) (hereinafter "Murgue").
REJECTIONS
The Examiner made the following rejections:
Claims 2, 6-16, and 18-20 are rejected under 35 U.S.C. § 101.
Claim 20 is rejected under 35 U.S.C. § 102(b) as being anticipated by
Knowlton.
Claims 12-15 are rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Schmitt and Heinze.
Claims 2, 6-11, and 16 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Knowlton and Murgue.
CONTENTIONS AND ANALYSIS
We have reviewed Appellant's arguments in the Briefs, the
Examiner's rejection, and the Examiner's response to Appellant's
arguments. We do not find Appellant's arguments persuasive. Instead, we
find the Examiner has provided a comprehensive response to Appellant's
arguments supported by a preponderance of evidence. Ans. 3-7. As such,
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we adopt the Examiner's findings and explanations provided in the Non-
Final Rejection and Answer. Id.; Non-Final Act. 2-15.
Section 1 OJ Rejection
An invention is patent eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. E.g., Alice Corp. v. CLS Bank Int'!, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
we first determine what concept the claim is "directed to." See Alice, 573
U.S. at 219 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594-95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 191
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(1981 )); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267-68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 176, 187; see also id. at 191
("We view respondents' claims as nothing more than a process for molding
rubber products and not as an attempt to patent a mathematical formula.").
Having said that, the Supreme Court also indicated that a claim "seeking
patent protection for that formula in the abstract ... is not accorded the
protection of our patent laws, ... and this principle cannot be circumvented
by attempting to limit the use of the formula to a particular technological
environment." Id. ( citing Benson and Flook); see, e.g., Diehr, 450 U.S. at
187 ("It is now commonplace that an application of a law of nature or
mathematical formula to a known structure or process may well be deserving
of patent protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 ( quotation marks omitted).
"A claim that recites an abstract idea must include 'additional features' to
ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [ abstract idea]."' Id. ( alterations in original) ( quoting Mayo,
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566 U.S. at 77). "[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention." Id.
The United States Patent and Trademark Office ("USPTO") recently
published revised guidance on the application of§ 101. USPTO's 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) ("Revised Guidance"). Under that Revised Guidance, we first look to
whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see Manual of Patent Examining Procedure
("MPEP") §§ 2106.05(a)-(c), (e)-(h) (Rev. 08.2017 2018)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Revised Guidance, 84 Fed. at Reg. 54-56.
Abstract Idea
For the following reasons, we conclude the claims recite managing
personal behavior or relationships or interactions between people, which is
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one of certain methods of organizing human activity identified in the
Revised Guidance, and thus an abstract idea. See Revised Guidance, 84 Fed.
Reg. at 52.
Claim 2
We first address claim 2. The claim is directed to an abstract idea
because it is directed to managing personal behavior or relationships or
interactions between people, which is one of certain methods of organizing
human activity, as discussed below. The steps of claim 2, including, with
italics added:
A) Requesting an individual user to input data
descriptive of symptoms of a disease, and inputting the data
descriptive, of symptoms of a disease by the individual user
into the memory of a computer operationally connected to a
programmable processor;
B) Requesting the individual user to input data
descriptive of a diagnosis made by a medical professional with
respect to the symptoms and the individual user, and inputting
the data descriptive of a diagnosis made by a medical
professional with respect to the symptom and the individual
user by the individual user, whereby the user is prompted to
indicate whether the diagnosis is based on test verified-lab
results, or on an assumption level;
C) Requesting the individual user to input data
descriptive of a treatment received by the individual user with
respect to the symptoms and the diagnosis, and inputting the
data descriptive of a treatment received by the individual user
with respect to the symptoms and the diagnosis by the
individual user;
D) Requesting the individual user to input data
descriptive of symptoms and diagnosed disease which has been
successfully treated, and inputting the data descriptive of
symptoms and diagnosed disease which has been successfully
treated by the individual user;
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E) Requesting the individual user to input data
descriptive of symptoms and diagnosed disease, which has not
been successfully treated, and inputting the data descriptive of
symptoms and diagnosed disease which has not been
successfully treated by the individual user;
F) Requesting input of qualification of the treatment
received, and inputting the qualification by the individual user;
G) Storing the inputted data;
H) Requesting the individual user to input data
descriptive of resources for the treatment received, the
resources comprising at least one of:
quantities of treatment;
cost of treatment;
time of treatment; and
human resource factor,
and inputting the data descriptive of resources for the
treatment received by the individual user, thereby creating an
individual user profile, and associating the inputted data with
the individual user profile;
I) Upon request by the same or another individual user:
searching treatment with optimal I worst patient
outcome by
comparing different treatments with each other,
searching for matches in the user's profile and
reporting cases with highest or lowest overlap in in
profile structure,
searching for common false diagnoses,
searching likely diseases from most to least
frequent citations in the database; and
creating a report that lists all relevant diseases
thus obtained in the database of the system, the system
differentiating between diseases that have been test-
verified and diseases that have only been assumed; and
J) Based on the report, optimizing treatment for the
individual user.
recite steps of "requesting" many various types of "data" from a
"user," and "upon request" by the user or another individual user,
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"searching," "treatment options, diagnoses, likely diseases," and "creating a
report that lists all relevant diseases," and "based on the report, optimizing
treatment for the individual user."
Under Supreme Court precedent, claims directed purely to an abstract
idea are patent ineligible. As set forth in the Revised Guidance, which
extracts and synthesizes key concepts identified by the courts, abstract ideas
include ( 1) mathematical concepts, (2) certain methods of organizing human
activity, and (3) mental processes. Among those certain methods of
organizing human activity listed in the Revised Guidance are methods of
managing personal behavior or relationships or interactions between people,
such as in Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66
(2012). The patent claims at issue in Mayo covered processes that help
doctors who use thiopurine drugs to treat patients with autoimmune diseases
determine whether a given dosage level was too low or too high. Id. The
claims purported to apply natural laws describing the relationships between
the concentration in the blood of certain thiopurine metabolites and the
likelihood that the drug dosage would be ineffective or induce harmful side-
effects. Id. At issue was whether the claimed processes have transformed
these unpatentable natural laws into patent-eligible applications of those
laws. Id. The Court concluded that they have not done so and that,
therefore, the processes were not patentable. Id.
Like Mayo, the claims at issue in this case also recite a method of
managing personal behavior or relationships or interactions between people.
Specifically, the italicized steps fall under the umbrella of managing
personal behavior or relationships or interactions between people, including
processes to help collect medical information from users and diagnose
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patients, because these steps would ordinarily take place in an interaction
with a doctor or medical professional obtaining information from a person,
relevant to their medical care.
Additionally, we are not persuaded that the claims recite an additional
element that applies or uses a judicial exception to effect a particular
treatment or prophylaxis for a disease or medical condition. See Guidance,
84 Fed. Reg. at 55. The claims in this case are unlike the claims in Vanda
Pharmaceuticals Inc. v. West-Ward Pharmaceuticals, 887 F.3d 1117 (Fed.
Cir. 2018), which included "determining" with a genotyping assay, and then
"administering" a certain quantity of drug based on that determination, in
order to "treat a particular disease." Id. at 1134. The Federal Circuit noted
that although the "claim in Mayo recited administering a thiopurine drug to a
patient, the claim as a whole was not directed to the application of a drug to
treat a particular disease." Id. That is, although the Mayo claims recited a
step of administering a drug to a patient, that step was performed to gather
data about the natural relationships, and thus was ancillary to the overall
diagnostic focus of the claims. The Mayo claims, like the claims at issue in
this case, were not "method of treatment" claims that practically apply a
natural relationship.
In accordance with the Revised Guidance, and looking to MPEP
§§ 2106.05(a)-(c) and (e)-(h), we determine that the additional elements of
claim 2, both individually and as an ordered combination, do not integrate a
judicial exception into a practical application. Claim 2 is directed to little
more than the implementation of the abstract idea on generic computer
servers and devices. The claim, as a whole, describes how to generally
apply or execute the concept as a "computer-implemented method." The
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claimed "memory of a computer," "operationally connected to a
programmable processor," and "database" are recited at a high level of
generality and are merely invoked as tools to perform an existing process.
See, e.g., Spec. 33, 11. 5-25 ("Processors may include general and special
purpose microprocessors.") Simply implementing the abstract idea on
generic computer components is not a practical application of the abstract
idea. The claimed invention does not focus on improving computers as
tools, but rather certain independently abstract ideas that use computers as
tools. See Mortgage Grader Inc. v. First Choice Loan Services, Inc., 811
F.3d 1314, 1324-25 (Fed. Cir. 2016) (noting that components such as
"database" are generic computer components that do not satisfy the
inventive concept requirement); see also Guidance, 84 Fed. Reg. at 55
(citing MPEP § 2106.05([)).
Accordingly, the claim, as a whole, does not integrate the abstract idea
into a practical application, because the claim limitations do not impose any
meaningful limits on practicing the abstract idea. Stated differently, the
claims do not (1) improve the functioning of a computer or other technology,
(2) are not applied with any particular machine (except for generic computer
components), (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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Inventive Concept
Because we determine that claim 2 is "directed to" an abstract idea,
we next consider whether claim 2 recites an "inventive concept." The
Examiner determined that claim 2 does not recite an inventive concept
because the additional elements in the claim do not amount to "significantly
more" than an abstract idea. See Non-Final Act. 2, 3; Ans. 3, 4.
We agree with the Examiner's determination in this regard. The
additional elements recited in claim 2 include a "memory of a computer
operationally connected to a programmable processor." The claim recites
these elements at a high level of generality, and the written description
indicates that these elements are generic computer components. See, e.g.,
Spec. 33, 11. 5-25 ("Processors may include general and special purpose
microprocessors."). Using generic computer components to perform
abstract ideas does not provide the necessary inventive concept. See Alice,
573 U.S. at 223 ("[T]he mere recitation of a generic computer cannot
transform a patent-ineligible abstract idea into a patent-eligible invention.").
Thus, these elements, taken individually or together, do not amount to
"significantly more" than the abstract idea itself.
Appellant contends the Examiner erred in rejecting the claims under
35 U.S.C. § 101, because the claims do not preempt others from using the
abstract idea. Reply Br. 6; App. Br. 40. We are not persuaded of Examiner
error by this argument.
Preemption is a driving concern when determining patent eligibility.
See Alice, 5 73 U.S. at 216-17. Patent law cannot inhibit further discovery
by improperly tying up the future use of the building blocks of human
ingenuity. See id. ( citing Mayo, 566 U.S. at 85-86). Although preemption
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is characterized as a driving concern for patent eligibility, preemption itself
is not the test for patent eligibility. "Where 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 Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379
(Fed. Cir. 2015). "While preemption may signal patent ineligible subject
matter, the absence of complete preemption does not demonstrate patent
eligibility." Id.
Moreover, we are not persuaded that the claimed invention improves
the computer or its components' functionality or efficiency, or otherwise
changes the way those devices function, at least in the sense contemplated
by the Federal Circuit in Enfish LLC v. Microsoft Corp., 822 F.3d 1327
(Fed. Cir. 2016), despite Appellant's arguments to the contrary (App. Br.
14-15). The claimed self-referential table in Enfish was a specific type of
data structure designed to improve the way a computer stores and retrieves
data in memory. Enfish, 822 F.3d at 1339. To the extent Appellant
contends that the claimed invention uses such a data structure to improve a
computer's functionality or efficiency, or otherwise change the way that
device functions, there is no persuasive evidence on this record to
substantiate such a contention. As the Examiner points out, the claimed
computer is only used to perform insignificant extra-solution activity. Ans.
4; see also Mayo, 566 U.S. at 79 (concluding that additional element of
measuring metabolites of a drug administered to a patient was insignificant
extra-solution activity, which was insufficient to confer patent eligibility).
In conclusion, the additional recited elements-considered
individually and as an ordered combination-do not add significantly more
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than the abstract idea to provide an inventive concept under Alice/Mayo step
two. See Alice, 573 U.S. at 221; see also Guidance, 84 Fed. Reg. at 56.
Accordingly, we sustain the Examiner's rejection of claim 2. For the
same reasons, we sustain the rejection of independent claim 20, for which
Appellants present no additional arguments. We also sustain the rejection of
dependent claims 18 and 19 for the same reasons, for which Appellants
present no additional substantive arguments. App. Br. 52-54.
Claim 6
Next, we address independent claim 6. The claim is directed to an
abstract idea because it is directed to managing personal behavior or
relationships or interactions between people, which is one of certain methods
of organizing human activity, as discussed below. The steps of claim 6,
including, with italics added:
A) Requesting an individual user to input attribute data for the
individual user into the memory of a computer operationally
connected to a programmable processor, the attribute data being data
which is constant during lifetime of the individual user; the attribute
data comprising at least one of date of birth;
blood group;
genetic code;
indications as to ethnic background;
indications as to hereditary diseases;
and inputting the attribute data by the individual user;
B) Requesting the individual user to input variable data for an
individual user, the variable data being data which is subject to
changes during lifetime of the individual user;
the variable data comprising at least one of
body mass index;
indications as to geographic location;
indications as to environment;
indications as to risks;
and inputting the variable data by the individual user;
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C) Associating the inputted data with the individual user;
D) Storing the inputted data associated with the individual user
in the database;
E) Associating a new user profile with the stored inputted data;
F) Displaying the new user profile to the individual user for
review;
G) Requesting the individual user to input data regarding the
individual user review and inputting data regarding the individual user
review by the individual user; and
H) Upon request by the same or another individual user to
search matching epidemiological profiles,
Screening the database for matching epidemiological profiles,
and confirming their existence with yes or no, and
applying the following:
Searching treatment with optimal I worst patient outcome
by comparing different treatments with each other,
Searching for matches in the user's profile and report
cases with highest or lowest overlap in profile structure,
Searching for common false diagnoses, and
Searching likely diseases from most to least frequent
citations in the database and
I) creating a report that lists all relevant diseases in the
database of the system, the report differentiating between diseases that
have been test-verified and diseases that have only been assumed:
J) Based on the report, optimizing treatment for the individual
user.
Claim 6 recites steps of "requesting" many various types of "data" to
be input by an individual user, and "upon request" by the user or another
individual user, "searching," "the database for matching epidemiological
profiles," "Searching treatment with optimal/ worst patient outcome by
comparing different treatments with each other, Searching for matches in the
user's profile and report cases with highest or lowest overlap in profile
structure, Searching for common false diagnoses, and Searching likely
diseases from most to least frequent citations in the database," "creating a
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report that lists all relevant diseases," and "based on the report, optimizing
treatment for the individual user."
Under Supreme Court precedent, claims directed purely to an abstract
idea are patent ineligible. As set forth in the Revised Guidance, which
extracts and synthesizes key concepts identified by the courts, abstract ideas
include ( 1) mathematical concepts, (2) certain methods of organizing human
activity, and (3) mental processes. Among those certain methods of
organizing human activity listed in the Revised Guidance are methods of
managing personal behavior or relationships or interactions between people,
such as in Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66
(2012). The patent claims at issue in Mayo covered processes that help
doctors who use thiopurine drugs to treat patients with autoimmune diseases
determine whether a given dosage level was too low or too high. Id. The
claims purported to apply natural laws describing the relationships between
the concentration in the blood of certain thiopurine metabolites and the
likelihood that the drug dosage would be ineffective or induce harmful side-
effects. Id. At issue was whether the claimed processes have transformed
these unpatentable natural laws into patent-eligible applications of those
laws. Id. The Court concluded that they have not done so and that,
therefore, the processes were not patentable. Id.
Like Mayo, claim 6 also recites a method of managing personal
behavior or relationships or interactions between people. Specifically, the
italicized steps fall under the umbrella of managing personal behavior or
relationships or interactions between people, including processes to help
collect medical information from users and diagnose patients, because these
steps would ordinarily take place in an interaction with a doctor or medical
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professional obtaining information from a person, relevant to their medical
care.
Additionally, we are not persuaded that claim 6 recites an additional
element that applies or uses a judicial exception to effect a particular
treatment or prophylaxis for a disease or medical condition. See Guidance,
84 Fed. Reg. at 55. Claim 6 is unlike the claims in Vanda Pharmaceuticals
Inc. v. West-Ward Pharmaceuticals, 887 F.3d 1117 (Fed. Cir. 2018), which
included "determining" with a genotyping assay, and then "administering" a
certain quantity of drug based on that determination, in order to "treat a
particular disease." Id. at 1134. The Federal Circuit noted that although the
"claim in Mayo recited administering a thiopurine drug to a patient, the
claim as a whole was not directed to the application of a drug to treat a
particular disease." Id. That is, although the Mayo claims recited a step of
administering a drug to a patient, that step was performed to gather data
about the natural relationships, and thus was ancillary to the overall
diagnostic focus of the claims. The Mayo claims, like claim 6, were not
"method of treatment" claims that practically apply a natural relationship.
In accordance with the Revised Guidance, and looking to MPEP
§§ 2106.05(a)-(c) and (e)-(h), we determine that the additional elements of
claim 6, both individually and as an ordered combination, do not integrate a
judicial exception into a practical application. Claim 6 is directed to little
more than the implementation of the abstract idea on generic computer
servers and devices. The claim, as a whole, describes how to generally
apply or execute the concept as a "computer-implemented method." The
claimed "memory of a computer," "operationally connected to a
programmable processor," and "database" are recited at a high level of
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generality and are merely invoked as tools to perform an existing process.
See, e.g., Spec. 33, 11. 5-25 ("Processors may include general and special
purpose microprocessors."). We find no specific description regarding the
database in the Specification, and Appellants do not direct our attention to
one. Simply implementing the abstract idea on generic computer
components is not a practical application of the abstract idea. The claimed
invention does not focus on improving computers as tools, but rather certain
independently abstract ideas that use computers as tools. See Mortgage
Grader Inc. v. First Choice Loan Services, Inc., 811 F.3d 1314, 1324-25
(Fed. Cir. 2016) (noting that components such as "database" are generic
computer components that do not satisfy the inventive concept requirement);
see also Guidance, 84 Fed. Reg. at 55 (citing MPEP § 2106.05(±)).
Accordingly, the claim, as a whole, does not integrate the abstract idea
into a practical application, because the claim limitations do not impose any
meaningful limits on practicing the abstract idea. Stated differently, the
claims do not (1) improve the functioning of a computer or other technology,
(2) are not applied with any particular machine (except for generic computer
components), (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).
Inventive Concept
Because we determine that claim 6 is "directed to" an abstract idea,
we next consider whether claim 6 recites an "inventive concept." The
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Examiner determined that claim 6 does not recite an inventive concept
because the additional elements in the claim do not amount to "significantly
more" than an abstract idea. See Non-Final Act. 2, 3; Ans. 3, 4.
We agree with the Examiner's determination in this regard. The
additional elements recited in claim 6 include a "database" and a "memory
of a computer operationally connected to a programmable processor." The
claim recites these elements at a high level of generality, and the written
description indicates that these elements are generic computer components.
See, e.g., Spec. 33, 11. 5-25 ("Processors may include general and special
purpose microprocessors."). Using generic computer components to
perform abstract ideas does not provide the necessary inventive concept.
See Alice, 573 U.S. at 223 ("[T]he mere recitation of a generic computer
cannot transform a patent-ineligible abstract idea into a patent-eligible
invention."). Thus, these elements, taken individually or together, do not
amount to "significantly more" than the abstract idea itself.
Appellant contends the Examiner erred in rejecting the claims under
35 U.S.C. § 101, because the claims do not preempt others from using the
abstract idea. Reply Br. 6; App. Br. 40. We are not persuaded of Examiner
error by this argument.
Preemption is a driving concern when determining patent eligibility.
See Alice, 5 73 U.S. at 216-17. Patent law cannot inhibit further discovery
by improperly tying up the future use of the building blocks of human
ingenuity. See id. ( citing Mayo, 566 U.S. at 85-86). Although preemption
is characterized as a driving concern for patent eligibility, preemption itself
is not the test for patent eligibility. "Where a patent's claims are deemed
only to disclose patent ineligible subject matter under the Mayo framework,
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as they are in this case, preemption concerns are fully addressed and made
moot." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379
(Fed. Cir. 2015). "While preemption may signal patent ineligible subject
matter, the absence of complete preemption does not demonstrate patent
eligibility." Id.
Moreover, we are not persuaded that the claimed invention improves
the computer or its components' functionality or efficiency, or otherwise
changes the way those devices function, at least in the sense contemplated
by the Federal Circuit in Enfish LLC v. Microsoft Corp., 822 F.3d 1327
(Fed. Cir. 2016), despite Appellant's arguments to the contrary (App. Br.
14-15). The claimed self-referential table in Enfish was a specific type of
data structure designed to improve the way a computer stores and retrieves
data in memory. Enfish, 822 F.3d at 1339. To the extent Appellant
contends that the claimed invention uses such a data structure to improve a
computer's functionality or efficiency, or otherwise change the way that
device functions, there is no persuasive evidence on this record to
substantiate such a contention. As the Examiner points out, the claimed
computer is only used to perform insignificant extra-solution activity. Ans.
4; see also Mayo, 566 U.S. at 79 (concluding that additional element of
measuring metabolites of a drug administered to a patient was insignificant
extra-solution activity, which was insufficient to confer patent eligibility).
In conclusion, the additional recited elements-considered
individually and as an ordered combination-do not add significantly more
than the abstract idea to provide an inventive concept under Alice/Mayo step
two. See Alice, 573 U.S. at 221; see also Revised Guidance, 84 Fed. Reg. at
56.
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Accordingly, we sustain the Examiner's Section 101 rejection of
claim 6. We address additional arguments with respect to dependent claims
7-11 below.
Dependent Claim 7
Dependent claim 7 recites the method of claim 6, further comprising
presenting a plurality of optimization tools to the individual user, each tool
providing data processing operations. With respect to the Section 101
rejection of dependent claim 7, Appellants additionally argue that the
"optimization tools" recited in claim 7 further distinguish the claimed
invention from a method of organizing human activities and add specific
limitations and "unconventional steps" that confine the claim to a particular
useful application, i.e., "reporting commonalities in treatment or
epidemiological pattern." App. Br. 29. We conclude that claim 7' s
"optimization tools," which provide data processing operations, while
potentially beneficial, recite an abstract idea. Although the claimed
invention may be beneficial by reporting commonalities in treatment or
epidemiological pattern, a claim for a useful or beneficial abstract idea is
still an abstract idea. See Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788
F.3d 1371, 1379-80 (Fed. Cir. 2015). As discussed above with respect to
claim 6, the claimed invention does not focus on improving computers as
tools, but rather certain independently abstract ideas that use computers,
such as the "optimization tools" providing data processing operations, as
tools. See Guidance, 84 Fed. Reg. at 55 (citing MPEP § 2106.05([)). For
these reasons and for the reasons discussed above with respect to claim 6,
we sustain the Examiner's Section 101 rejection of dependent claim 7.
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Dependent Claim 8
Claim 8 recites the method of claim 7, further comprising presenting a
set of resource tracking tools. Appellants argue claim 8 adds specific
unconventional steps that confine claim 8 to a new and useful end, that is,
"provision of quantities of treatment, cost of treatment, time of treatment,
and/or human resource factor." App. Br. 31. Yet, we determine this
claimed provision of information, such as the quantity, cost, or time of
treatment, is insignificant extra-solution activity insufficient to integrate the
abstract idea into a practical application. See Revised Guidance, 84 Fed.
Reg. at 55 (citing MPEP § 2106.05(g)). For these reasons and for the
reasons discussed above with respect to claims 6 and 7, we sustain the
Examiner's Section 101 rejection of dependent claim 8.
Dependent Claim 9
Claim 9 recites the method of claim 8, further comprising presenting
the set of resource tracking tools as a function of a qualification group of the
individual user. Appellants argue that presenting the set of tracking tools as
a function of qualification group of the individual user is unconventional and
confines the claim to a new and useful end. App. Br. 32-33. We are not
persuaded by this argument because not only is the recited presenting step
implemented via generic computing components, but it also constitutes
insignificant extra-solution activity insufficient to integrate the abstract idea
into a practical application. See Revised Guidance, 84 Fed. Reg. at 55
(citing MPEP § 2106.05(g)). For these reasons and for the reasons discussed
above with respect to claims 6-8, we sustain the Examiner's Section 101
rejection of dependent claim 9.
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Dependent Claim 10
Dependent claim 10 recites the method of claim 9, further comprising
providing the set of resource tracking tools "via internet." Appellants argue
that presenting the set of tracking tools further distinguishes the claimed
invention from a method of organizing human activities. App. Br. 34-35.
We are not persuaded by this argument because not only is the recited
providing step implemented via generic computing components, but it also
constitutes insignificant extra-solution activity insufficient to integrate the
abstract idea into a practical application. See Revised Guidance, 84 Fed.
Reg. at 55 (citing MPEP § 2106.05(g)). For these reasons and for the
reasons discussed above with respect to claims 6-9, we sustain the
Examiner's Section 101 rejection of dependent claim 10.
Dependent Claim 11
Dependent claim 11 recites the method of claim 10, further
comprising providing the set of resource tracking tools "on portable
devices." Appellants argue that presenting the set of tracking tools further
distinguishes the claimed invention from a method of organizing human
activities. App. Br. 36-37. We are not persuaded by this argument because
not only is the recited providing step implemented via generic computing
components, but it also constitutes insignificant extra-solution activity
insufficient to integrate the abstract idea into a practical application. See
Revised Guidance, 84 Fed. Reg. at 55 (citing MPEP § 2106.05(g)). For
these reasons and for the reasons discussed above with respect to claims 6-
10, we sustain the Examiner's Section 101 rejection of dependent claim 11.
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Claim 12
Next, we address independent claim 12. The claim is directed to an
abstract idea because it is directed to managing personal behavior or
relationships or interactions between people, which is one of certain methods
of organizing human activity, as discussed below. The steps of claim 12,
including, with italics added:
A) Displaying, to an individual user, text fields comprising
data descriptive of predefined symptoms of predetermined diseases;
B) Prompting the individual user to enter data descriptive of
a disease symptom of interest to the individual user in a free text field,
which is entered into the memory of a computer operationally
connected to a programmable processor;
C) Entering, by the individual user, data descriptive of the
particular symptom in the free text field, in response to the prompting;
D) Performing a search in the database for data similar to
the data entered in the free text field;
E) If data similar to the entered data is found in the
database, discarding the entered data;
F) If data similar to the entered data is not found in the
database, initiating an evaluation process of the entered data,
prompting a system administrator, clearance manager and expert to
assume qualifying and verifying new content proposals; and
G) If the evaluation process is positive, approving the new
content proposal and entering the new content proposal into the
database.
recite steps of "displaying ... text fields" "prompting the individual
user to enter data descriptive of a disease symptom," entering the data,
"performing a search in a database," and discarding the entered data, or
alternatively, approving new content if similar data is found in the database.
Under Supreme Court precedent, claims directed purely to an abstract
idea are patent ineligible. As set forth in the Revised Guidance, which
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extracts and synthesizes key concepts identified by the courts, abstract ideas
include ( 1) mathematical concepts, (2) certain methods of organizing human
activity, and (3) mental processes. Among those certain methods of
organizing human activity listed in the Revised Guidance are methods of
managing personal behavior or relationships or interactions between people,
such as in Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66
(2012). The patent claims at issue in Mayo covered processes that help
doctors who use thiopurine drugs to treat patients with autoimmune diseases
determine whether a given dosage level was too low or too high. Id. The
claims purported to apply natural laws describing the relationships between
the concentration in the blood of certain thiopurine metabolites and the
likelihood that the drug dosage would be ineffective or induce harmful side-
effects. Id. At issue was whether the claimed processes have transformed
these unpatentable natural laws into patent-eligible applications of those
laws. Id. The Court concluded that they have not done so and that,
therefore, the processes were not patentable. Id.
Like Mayo, claim 12 also recites a method of managing personal
behavior or relationships or interactions between people. Specifically, the
italicized steps fall under the umbrella of managing personal behavior or
relationships or interactions between people, including processes to help
collect medical information from users, because these steps would ordinarily
take place in an interaction with a doctor or medical professional obtaining
information relevant to medical care or medical research.
Additionally, we are not persuaded that claim 12 recites an additional
element that applies or uses a judicial exception to effect a particular
treatment or prophylaxis for a disease or medical condition. See Revised
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Guidance, 84 Fed. Reg. at 55. In accordance with the Revised Guidance,
and looking to MPEP §§ 2106.05(a)-(c) and (e)-(h), we determine that the
additional elements of claim 12, both individually and as an ordered
combination, do not integrate a judicial exception into a practical
application. Claim 12 is directed to little more than the implementation of
the abstract idea on generic computer servers and devices. The claim, as a
whole, describes how to generally apply or execute the concept as a
"computer-implemented method." The claimed "memory of a computer,"
"operationally connected to a programmable processor," and "database" are
recited at a high level of generality and are merely invoked as tools to
perform an existing process. See, e.g., Spec. 33, 11. 5-25 ("Processors may
include general and special purpose microprocessors.") We find no specific
description regarding the database in the Specification, and Appellants do
not direct our attention to one. Simply implementing the abstract idea on
generic computer components is not a practical application of the abstract
idea. The claimed invention does not focus on improving computers as
tools, but rather certain independently abstract ideas that use computers as
tools. See Mortgage Grader Inc. v. First Choice Loan Services, Inc., 811
F.3d 1314, 1324-25 (Fed. Cir. 2016) (noting that components such as a
"database" are generic computer components that do not satisfy the
inventive concept requirement); see also Guidance, 84 Fed. Reg. at 55
(citing MPEP § 2106.05(±)).
Accordingly, the claim, as a whole, does not integrate the abstract idea
into a practical application, because the claim limitations do not impose any
meaningful limits on practicing the abstract idea. Stated differently, the
claims do not (1) improve the functioning of a computer or other technology,
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(2) are not applied with any particular machine (except for generic computer
components), (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).
Inventive Concept
Because we determine that claim 12 is "directed to" an abstract idea,
we next consider whether claim 12 recites an "inventive concept." The
Examiner determined that claim 12 does not recite an inventive concept
because the additional elements in the claim do not amount to "significantly
more" than an abstract idea. See Non-Final Act. 2, 3; Ans. 3, 4.
We agree with the Examiner's determination in this regard. The
additional elements recited in claim 12 include a "database" and a "memory
of a computer operationally connected to a programmable processor." The
claim recites these elements at a high level of generality, and the written
description indicates that these elements are generic computer components.
See, e.g., Spec. 33, 11. 5-25 ("Processors may include general and special
purpose microprocessors."). Using generic computer components to
perform abstract ideas does not provide the necessary inventive concept.
See Alice, 573 U.S. at 223 ("[T]he mere recitation of a generic computer
cannot transform a patent-ineligible abstract idea into a patent-eligible
invention."). Thus, these elements, taken individually or together, do not
amount to "significantly more" than the abstract idea itself.
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Appellant contends the Examiner erred in rejecting the claims under
35 U.S.C. § 101, because the claims do not preempt others from using the
abstract idea. Reply Br. 6; App. Br. 40. We are not persuaded of Examiner
error by this argument.
Preemption is a driving concern when determining patent eligibility.
See Alice, 5 73 U.S. at 216-17. Patent law cannot inhibit further discovery
by improperly tying up the future use of the building blocks of human
ingenuity. See id. ( citing Mayo, 566 U.S. at 85-86). Although preemption
is characterized as a driving concern for patent eligibility, preemption itself
is not the test for patent eligibility. "Where 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 Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379
(Fed. Cir. 2015). "While preemption may signal patent ineligible subject
matter, the absence of complete preemption does not demonstrate patent
eligibility." Id.
Moreover, we are not persuaded that the claimed invention improves
the computer or its components' functionality or efficiency, or otherwise
changes the way those devices function, at least in the sense contemplated
by the Federal Circuit in Enfish LLC v. Microsoft Corp., 822 F.3d 1327
(Fed. Cir. 2016), despite Appellant's arguments to the contrary (App. Br.
14-15). The claimed self-referential table in Enfish was a specific type of
data structure designed to improve the way a computer stores and retrieves
data in memory. Enfish, 822 F.3d at 1339. To the extent Appellant
contends that the claimed invention uses such a data structure to improve a
computer's functionality or efficiency, or otherwise change the way that
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device functions, there is no persuasive evidence on this record to
substantiate such a contention. As the Examiner points out, the claimed
computer is only used to perform insignificant extra-solution activity. Ans.
4; see also Mayo, 566 U.S. at 79 (concluding that additional element of
measuring metabolites of a drug administered to a patient was insignificant
extra-solution activity, which was insufficient to confer patent eligibility).
In conclusion, the additional recited elements-considered
individually and as an ordered combination-do not add significantly more
than the abstract idea to provide an inventive concept under Alice/Mayo step
two. See Alice, 573 U.S. at 221; see also Revised Guidance, 84 Fed. Reg. at
56.
Accordingly, we sustain the Examiner's Section 101 rejection of
independent claim 12. For the same reasons, we sustain the rejection of
dependent claims 1315.
Accordingly, we sustain the Examiner's rejection of claims 2, 6-16,
and 18-20 under 35 U.S.C. § 101 as directed to patent-ineligible subject
matter.
Section 103 Rejection
Claims 12-15
With respect to the Section 103 rejection of claims 12-15, Appellant
argues Schmitt's database is "completely static; that is, a user of the system,
such as the physician, has no opportunity to provide any input to the
database through content proposal." App. Br. 61. "Thus, Schmitt[] do[es]
not describe or suggest that the database is able to "learn" new diseases or
treatments for these new diseases." Id. at 62. Appellant additionally argues
that Heinze also "does not disclose or suggest a system that allows for
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learning new diseases and new treatments." Id. at 63. Yet, as the Examiner
points out, and we agree, the features of being "dynamic" and "learning new
diseases and new treatments" are not claimed. Ans. 5.
Appellant also argues neither reference includes prompting a user to
enter data in a free text field. App. Br. 62. We are not persuaded by this
argument. As the Examiner finds, and we agree, Heinze teaches a free text
note entered by a user. Non-Final Act. 6 (citing Heinze, 8:9-39 ("Note
segmentation involutes the processing of input notes ... each note ...
typically is required to contain certain sections: the history of the present
illness .... ")).
Next, Appellant argues "neither reference discloses or suggests a
system that prompts a system administrator, clearance manager, and expert
to assume qualifying and verifying new content proposals, or, if the
evaluation process is positive, approving the new content proposal and
entering the new content proposal into the database, as recited in claim 12."
App. Br. 63. Yet, the Examiner points out that these "features are recited in
the alternative, if a branch of the 'if statement is taught by the art (Heinze is
relied upon for one branch of the 'if statement as above), then it meets the
claim limitation." Ans. 5.
As an initial matter of claim construction, we conclude the conditional
limitations "F) If data similar to the entered data is not found in the database,
initiating an evaluation process ... " and "G) If the evaluation process is
positive ... " are not required to be performed in the event data similar to the
entered data is not found in the database.
Conditional steps employed in a method claim need not be found in
the prior art, if, under the broadest reasonable interpretation, the method
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need not invoke those steps. See Ex parte Schulhauser, No. 2013-007847,
2016 WL 6277792 at *4 (PTAB April 28, 2016) (precedential) (holding
"[t]he Examiner did not need to present evidence of the obviousness of the
remaining method steps of claim 1 that are not required to be performed
under a broadest reasonable interpretation of the claim .... "); see also Ex
parte Katz, No. 2010-006083, 2011 WL 514314, at *A-4 (BPAI Jan. 27,
2011); Cybersettle, Inc. v. Nat'! Arbitration Forum, Inc., 243 F. App'x 603,
607 (Fed. Cir. 2007) (unpublished) ("It is of course true that method steps
may be contingent. If the condition for performing a contingent step is not
satisfied, the performance recited by the step need not be carried out in order
for the claimed method to be performed.").
Applying this reasoning here, we conclude the broadest reasonable
interpretation of claim 12 includes situations that fail to satisfy the condition
of step "F" ("If data similar to the entered data is not found in the
database"), and in these situations, the contested language following the
condition precedent is not required to be performed, including step G.
Therefore, we find unavailing Appellant's arguments that the cited
references fail to teach or suggest the conditional steps or acts of claim 12,
because such arguments are not commensurate with the broadest reasonable
interpretation of claim 12. See Schulhauser, at *4-5 (precedential).
Moreover, claim 13 depends from claim 12 and recites "wherein the
evaluation process comprises .... " Because we conclude this evaluation
process is not required to be performed, we find unavailing Appellant's
arguments that the cited references fail to teach or suggest the conditional
steps or acts of claim 13. Similarly, claim 14 depends from claim 13, and
claim 15 depend from claim 14. Because we conclude this evaluation
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process is not required to be performed, we find unavailing Appellant's
arguments that the cited references fail to teach or suggest the conditional
steps or acts of dependent claims 14 and 15.
Claim 2
With respect to the obviousness rejection of claim 2, 3 Appellant
argues the Examiner has not shown the claimed "creating a report that lists
all relevant diseases thus obtained in the database of the system, the system
differentiating between diseases that have been test-verified and diseases
that have only been assumed," as recited in claim 2. App. Br. 77. The
Examiner relies on Murgue for the report. Non-Final Act. 7; Ans. 6. The
Examiner states "[i]t is evident that this non-patent literature is of itself a
report that lists the relevant diseases in the database differentiating between
test verified and assumed diseases." Id. (emphasis added). The Examiner
also states that because the feature of creating a report is only used upon
request, it may never be used and is therefore an optional step. Id.
Appellant disputes that "upon request" renders the creation of the report an
optional step. Reply Br. 12-14.
We agree with Appellant that the language "upon request" does not
render the creation of the report an optional step of claim 2. Under a
broadest reasonable interpretation of the claim, and read in light of the
Specification, the report generation in the context of claim 2 is not an
optional step. The summary of the invention, and original claim 1, for
3 We note that both the Examiner and Appellant label the rejection of claim
2 as one of anticipation under Section 102, but the rejection of claim 2 is
framed in the Non-Final Action and the Answer as a Section 103 rejection
over the combination of Knowlton and Murgue, and we treat it as one of
obviousness under Section 103. See Non-Final Act. 7; Ans. 3.
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example, contain several limitations discussing generating a report, which
indicates this step is not intended to be optional. Spec. 2.
We agree with Appellant that Murgue itself being a report is
insufficient to teach the claimed limitation, which recites "creating a report
that lists all relevant diseases thus obtained in the database of the system, the
system differentiating between diseases that have been test-verified and
diseases that have only been assumed." Accordingly, we do not sustain the
Section 103 rejection of claim 2, or of claims 6-11 and 16.
Section 102 Rejection
Claim 20 is rejected under 35 U.S.C. § 102(b) as being anticipated by
Knowlton. Appellant argues that Knowlton does not disclose
requesting an individual user to input data, and the individual
user inputting, descriptive of symptoms of a disease, data
descriptive of a diagnosis made by a medical professional, with
respect to the symptoms and the individual user, data
descriptive of a treatment received by the individual user, with
respect to the symptoms and the diagnosis, data descriptive of
symptoms and diagnosed disease which has been successfully
treated, data descriptive of symptoms and diagnosed disease
which has not been successfully treated, qualification of the
treatment received, and data descriptive of quantities of
treatment, cost of treatment, tin 1 e of treatment, and/ or human
resource factor for the treatment received, as recited in claim
20.
App. Br. 100.
First, Knowlton's paragraph 53 describes medical history including all
pertinent medical information. Knowlton describes:
Medical history includes all pertinent medical information such
as the patient's treating physician information, medication
history including current prescription and over-the-counter
medications, lab results, generic history, hospital and hospice
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records, recent diagnosis, existing allergy, etc. Medical history
may also include a physician's ( or any other qualified
caretaker's) observation of using a particular medication on a
patient. Demographic profile includes all other
relevant information such as patient's age, contact information,
race, geographic information, etc. The patient database also
includes the subjective patient profile attributes such as the pain
level indicated by the patient and the pain level diagnosed by a
treating physician. The subjective attributes further include a
patient's opinion, such as one's satisfaction, regarding using a
particular medication.
Knowlton ,-J 53 ( emphasis added).
Moreover, we conclude the phrase "at least one of' recited in the last
element of claim 20 only requires one of the following descriptive resources:
quantities of treatment, cost of treatment, time of treatment, or human
resource factor. Thus, only one of the four recited resources needs to be
disclosed to render the contested limitation anticipated. The Examiner
points to Knowlton's disclosure of "cost information," and Appellant does
not specifically dispute this finding with respect to the disclosure of "cost of
treatment" for claim 20. Ans. 7; Knowlton ,-J 55. And, as the Examiner
explains, and we agree, a cost of a medication falls within the broadest
reasonable interpretation of a "treatment" because a medication is a type of
treatment. Ans. 6.
To the extent Appellant argues Knowlton does not disclose creating a
report (App. Br. 102), the Examiner points out, and we agree, claim 20 does
not recite creating a report. Ans. 7.
Accordingly, we are not persuaded of error in the Examiner's
rejection of claim 20.
37
Appeal 2018-0053 86
Application 12/025,154
CONCLUSIONS
The rejection of claims 2, 6-16, and 18-20 under 35 U.S.C. § 101 is
affirmed.
The rejection of claim 20 under 35 U.S.C. § 102(b) as being
anticipated by Knowlton is affirmed.
The rejection of claims 12-15 under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Schmitt and Heinze is affirmed.
The rejection of claims 2, 6-11, and 16 under 35 U.S.C. § 103(a) as
being unpatentable over Knowlton and Murgue is reversed.
DECISION
Because we affirm at least one ground of rejection for each claim, we
affirm the rejection of claims 2, 6-16, and 18-20.
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) (2009).
AFFIRMED
38