Ex Parte Chaudhri et al

Patent Trials and Appeals Board

Mar 29, 2019

13747336 - (D) (P.T.A.B. Mar. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/747,336 01/22/2013 Imran N. Chaudhri
36088 7590 04/01/2019
KANG LIM
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.
APX-1201-US 5350
EXAMINER
3494 Camino Tassajara #444 SEREBOFF, NEAL
Danville, CA 94506
ART UNIT PAPER NUMBER
3626
MAIL DATE DELIVERY MODE
04/01/2019 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte IMRAN N. CHAUDHRI, SHAHRAM SHAWN DASTMALCHI,
ROBERT DERWARD ROGERS, and
VISHNUVY AS SETHUMADHA VAN
Appeal2018-000886
Application 13/747,336
Technology Center 3600
Before ST. JOHN COURTENAY III, LARRY J. HUME, and
JOYCE CRAIG, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-10, which constitute all the claims pending in
this application. We have jurisdiction over the pending claims under
35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is Apixio, Inc. Br. 3.
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Application 13/747,336
STATEMENT OF THE CASE
Embodiments of Appellants' invention relate to: "a medical
information engine, and particularly to management and consolidation of
medical information which enables computation of payoffs that track
encounters." Spec. ,r 2.
Exemplary Claim
1. In a Medical Information Navigation Engine ("MINE"),
a computerized method for knowledge extraction and exchange,
the method comprising;
computing a current patient encounter vector for a
current patient encounter, wherein the current patient encounter
vector is a matrix value where the rows correspond to efficiency
of access to information and the columns correspond to
efficiency of action in the current patient encounter;
computing an optimal patient encounter vector by
assuming a best case patient encounter in accordance with at
least one organizational objective, wherein the optimal patient
encounter vector is a matrix value which maximizes the at least
one organizational objective according to the equation
P=I*[Ei,Ea], where Pis the at least one organizational
objective, I is a system efficiency modifier derived from
comparing prior payoffs to patient vectors, and [Ei,Ea] is the
patient encounter vector;
computing at least one difference between the best case
encounter and the current patient encounter;
computing a corresponding payoff for each of the at least
one difference; and
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providing, via an EHR user interface, in order of
potential payoff, at least one difference between the optimal
patient encounter vector and the current patient encounter
vector.
Br. 16 (Claims Appendix).
Rejections
A. Claims 1-10 are rejected under pre-AIA 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description
requirement. Final Act. 2.
B. Claims 1-10 are rejected under 35 U.S.C. § 101, as being directed to a
judicial exception, without significantly more. Final Act. 4.
ANALYSIS
We have considered all of Appellants' arguments and any evidence
presented. We highlight and address specific findings and arguments for
emphasis in our analysis below.
Rejection A under§ 112,firstparagraph, of Claims 1-10
Issue 1: Under pre-AIA 35 U.S.C. § 112, first paragraph, did the
Examiner err in finding that claims 1-10 fail to comply with the written
description requirement?
The Examiner finds the Specification and drawings of the application
do not sufficiently support the claim limitation "derived from comparing
prior payoffs to patient vectors," as recited in independent claims 1 and 6.
Final Act. 2-3. In reviewing the record, we observe this limitation was not
recited in the claims as originally filed, and thus was added by amendment
during prosecution. The Examiner cites to Figure [21], and paragraphs 22,
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72, and 7 4 of the Specification, and finds that how the computations in step
2108 of Figure [21] occur is not described. Final Act. 3. 2
Appellants cite to Figure 8 of their drawings for providing example
equations on how the patient vectors are calculated. Br. 8-9. Appellants
further explain that a person of ordinary skill in the art would understand the
claimed matrix, and the terms used, including determining an optimal value.
Br. 9. Appellants explain that, in an equation with three variables, where
two variables are known, the third can easily be calculated by someone of
ordinary skill in the art. Id.
The Examiner finds:
The Specification does not disclose the particular way the Bi or
"efficiency" is calculated or even potential values. Therefore,
the concatenation of an unknown efficiency matrix is equally
unknown and the result, the patient encounter vector, is not
disclosed. Therefore, although the Appellant asserts that there
are "two known variables," the specification does not disclose
at least one.
Since the figure 20 formula is to determine "P," the Appellant
looks at what the inventive goal is. Paragraph 6 states:
[0006] It is therefore apparent that an urgent need
exists for a medical information navigation engine
("MINE") capable of managing medical
information in a manner that [] enables the
calculation of payoffs in response to the outcome
of an encounter. Such a system will increase care
efficiency and increase care quality.
The goal of the invention is to "enables the calculation of
payoffs." The Appellant is therefore arguing that the
2 We note step 2108 is depicted in Figure 21, not Figure 20, of Appellants'
Drawings.
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result of the invention is to be used to determine the input of the
invention. As the Examiner has [ found,] that the input, I, is not
disclosed, the Appellant's argument is logically circular.
Ans. 4--5 ( emphasis added).
Our reviewing court guides the written description must "clearly
allow persons of ordinary skill in the art to recognize that [the inventor]
invented what is claimed." Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d
1336, 1351 (Fed. Cir. 2010) (en bane) (citation and quotations omitted). The
test is whether the disclosure "conveys to those skilled in the art that the
inventor had possession of the claimed subject matter as of the filing date."
Id. "[A]ctual 'possession' or reduction to practice outside of the
specification is not enough. Rather, ... it is the specification itself that must
demonstrate possession." Id. at 1352; see also PowerOasis, Inc. v. T-Mobile
USA, Inc., 522 F.3d 1299, 1306-07 (Fed. Cir. 2008) (explaining that§ 112,
,r 1 "requires that the written description actually or inherently disclose the
claim element").
[I]t is 'not a question of whether one skilled in the art might be able to
construct the patentee's device from the teachings of the disclosure ....
Rather, it is a question whether the application necessarily discloses that
particular device.' ... A description which renders obvious the invention for
which an earlier filing date is sought is not sufficient. Lockwood v. Am.
Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997) (quoting Jepson v.
Coleman, 314 F.2d 533,536 (CCPA 1963)) (emphasis added).
This reasoning is applicable here. In reviewing the record, we agree
with the Examiner that the Specification is insufficient to demonstrate
possession of Appellants' claimed invention and show each of the claimed
computations. As emphasized above, a description which merely renders
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obvious the invention for which an earlier filing date is sought is not
sufficient. Lockwood, 107 F.3d at 1572.
We note Appellants did not file a Reply Brief. Therefore, Appellants
have not responded to the Examiner's additional findings and explanations
in the Answer. Arguments not made are waived. See 37 C.F.R.
§ 4I.37(c)(l)(iv).
Because Appellants fail to direct our attention to sufficient disclosure
in the originally-filed Specification that demonstrates possession of the
claim limitation "derived from comparing prior payoffs to patient vectors"
(independent claims 1 and 6), we find Appellants' contentions do not
persuasively rebut the Examiner's findings. (Final Act. 2-3, Ans. 2-5).
Therefore, for the reasons discussed above, and based upon a preponderance
of the evidence, we are not persuaded the Examiner erred. Accordingly, we
sustain the Examiner's Rejection A of claims 1-10, under pre-AIA 35 U.S.C.
§ 112, first paragraph, for failing to comply with the written description
requirement.
Rejection B under§ 1 OJ of Claims 1-10
Issue 2: Did the Examiner err in rejecting claims 1-10 under
35 U.S.C. § 101, as being directed to a judicial exception, without
significantly more?
Principles of Law
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
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implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 70 (2012) (brackets in original) (citing Diamond v. Diehr,
450 U.S. 175, 185 (1981)).
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. Alice Corp. v. CLS Banklnt'l, 573 U.S. 208, 217-18 (2014)
(citing Mayo, 566 U.S. at 75-77). 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, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding of rubber products" (Diamond v. Diehr, 450 U.S. 175, 193
( 1981) ); "tanning, dyeing, making waterproof 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]
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claim drawn to subject matter otherwise statutory does not become
nonstatutory simply because it uses a mathematical formula." Diehr, 450
U.S. at 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., id. 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. ( quoting Mayo, 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.
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USPTO Patent Subject Matter Eligibility 2019 Revised Guidance
The USPTO recently published revised policy guidance on the
application of§ 101. See 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (hereinafter "2019 Revised
Guidance"). This new guidance is applied in this opinion. Under the 2019
Revised Guidance, we first look to whether the claim recites:
( 1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, mental processes, or certain methods of
organizing human activity such as a fundamental economic practice or
managing personal behavior or relationships or interactions between
people); 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)). 3 2019 Revised Guidance, 84 Fed. Reg.
at 51-52, 55.
A claim that integrates a judicial exception into a practical application
applies, relies on, or uses the judicial exception in a manner that imposes a
meaningful limit on the judicial exception, such that the claim is more than a
drafting effort designed to monopolize the judicial exception. 2019 Revised
Guidance. 84 Fed. Reg. at 54. When the judicial exception is so integrated,
then the claim is not directed to a judicial exception and is patent eligible
under § 101. Id.
Only if a claim: (1) recites a judicial exception, and (2) does not
integrate that exception into a practical application, do we then evaluate
3 All references to the MPEP are to the Ninth Edition, Revision 08-2017
(rev. Jan. 2018).
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whether the claim provides an inventive concept. 2019 Revised Guidance,
84 Fed. Reg. at 56; Alice, 573 U.S. at 217-18. For example, we 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, and conventional
activities previously known to the industry, specified at a high level of
generality, to the judicial exception. 2019 Revised Guidance, 84 Fed. Reg.
at 56.
Because there is no single definition of an "abstract idea" under Alice
step 1, the PTO has recently synthesized, for purposes of clarity,
predictability, and consistency, key concepts identified by the courts as
abstract ideas to explain that the "abstract idea" exception includes the
following three groupings:
1. Mathematical concepts-mathematical relationships, mathematical
formulas or equations, mathematical calculations;
2. Mental processes-concepts performed in the human mind
(including an observation, evaluation, judgment, opinion); and
3. Certain methods of organizing human activity-fundamental
economic principles or practices (including hedging, insurance,
mitigating risk); commercial or legal interactions (including
agreements in the form of contracts; legal obligations; advertising,
marketing or sales activities or behaviors; business relations);
managing personal behavior or relationships or interactions
between people (including social activities, teaching, and
following rules or instructions).
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According to the 2019 Revised Guidance, "claims that do not recite
[subject] matter that falls within these enumerated groupings of abstract
ideas should not be treated as reciting abstract ideas," except in rare
circumstances. Even if the claims recite any one of these three groupings of
abstract ideas, these claims are still not "directed to" a judicial exception
( abstract idea), and thus are patent eligible, if "the claim as a whole
integrates the recited judicial exception into a practical application of that
exception." 2019 Revised Guidance, 84 Fed. Reg. at 53.
For example, additional limitations that are indicative of "integration
into a practical application" include:
1. Improvements to the functioning of a computer, or to any
other technology or technical field - see MPEP §
2106.0S(a);
2. Applying the judicial exception with, or by use of, a
particular machine - see MPEP § 2106.05(b );
3. Effecting a transformation or reduction of a particular article
to a different state or thing-see MPEP § 2106.0S(c); and
4. Applying or using the judicial exception in some other
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 §
2106.0S(e).
In contrast, additional limitations that are not indicative of
"integration into a practical application" include:
1. Adding the words "apply it" ( or an equivalent) with the
judicial exception, or merely include instructions to
implement an abstract idea on a computer, or merely uses a
computer as a tool to perform an abstract idea - see MPEP §
2106.05(f);
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2. Adding insignificant extra-solution activity to the judicial
exception - see MPEP § 2106.05(g); and
3. Generally linking the use of the judicial exception to a
particular technological environment or field of use - see
MPEP 2106.05(h).
See 2019 Revised Guidance, 84 Fed. Reg. at 54--55 ("Prong Two").
The Examiner's Rejection under 35 U.S. C. § 1 OJ
The Examiner concludes claims 1-10 recite the abstract ideas of
mathematical relationships, mathematical equations and mathematical
calculations which are mathematical concepts, i.e., "organizing information
through mathematical correlations, comparing new and stored information
and using rules [(i.e., including a mathematical equation)] to identify
options." Final Act. 4.
The Examiner determines the claims do not include additional
elements that are sufficient to amount to significantly more than the judicial
exception because the processor and user interface as recited are generic
computer components that perform generic computer functions. Id. 4--5.
The Examiner notes that Appellants' Specification describes any kind of
suitable computing engine may be used to implement the invention, such as
a server or a personal computer operating as a server. Final Act. 5. The
Examiner explains the "claimed processor and user interface do not add
meaningful limitations to the abstract ideas beyond generally linking the
system to a particular technological environment, that is, implementation via
computers." Id.
For the aforementioned reasons, the Examiner concludes that
claims 1-10 are not patent eligible under 35 U.S.C. § 101.
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The Judicial Exception
Under the 2019 Revised Guidance ( 1 ), we consider whether the
claims are directed to any judicial exceptions, including certain groupings of
abstract ideas, in particular: (a) mathematical concepts, (b) mental steps, and
( c) certain methods of organizing human activities.
Claim 1 recites the following limitations: ( 1) "computing a current
patient encounter vector for a current patient encounter, wherein the current
patient encounter vector is a matrix value where the rows correspond to
efficiency of access to information and the columns correspond to efficiency
of action in the current patient encounter;" (2) "computing an optimal patient
encounter vector by assuming a best case patient encounter in accordance
with at least one organizational objective, wherein the optimal patient
encounter vector is a matrix value which maximizes the at least one
organizational objective according to the equation P=I*[Ei,Ea], where Pis
the at least one organizational objective, I is a system efficiency modifier
derived from comparing prior payoffs to patient vectors, and [Ei,Ea] is the
patient encounter vector;" (3) "computing at least one difference between
the best case encounter and the current patient encounter;" ( 4) "computing a
corresponding payoff for each of the at least one difference; and" ( 5)
"providing, via an EHR user interface, in order of potential payoff, at least
one difference between the optimal patient encounter vector and the current
patient encounter vector."
We conclude each of claim 1 limitations ( 1) through ( 4 ), under its
broadest reasonable interpretation, recites mathematical relationships,
mathematical equations and mathematical calculations which are
mathematical concepts - a specific subject matter group that is identified as
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an abstract idea under the 2019 Revised Guidance. Limitation (1) provides
calculating (i.e., "computing a current patient encounter vector") using
matrix values, limitation (2) provides an equation used in calculating an
optimal patient encounter vector, and limitations (3) and ( 4) calculate
differences and corresponding payoffs for each difference. In considering
Appellants' independent claims 1 and 6 as a whole, we note Appellants'
invention mathematically calculates payoff amounts.
Thus, after applying the 2019 Revised Guidance, and considering the
claims as a whole, we conclude Appellants' claims 1-10 fall into the
category of mathematical concepts.
Integration of the Judicial Exception into a Practical Application
Regarding the 2019 Revised Guidance (2), and for the reasons which
follow, we conclude that Appellants' claims 1-10 do not integrate the
judicial exception into a practical application. See MPEP §§ 2106.0S(a}-
( c) and ( e }-(h). Applying the 2019 Revised Guidance, we address these
"practical application" MPEP sections seriatim.
MP EP § 2106. 05 ( a) "Improvements to the Functioning of a Computer
or To Any Other Technology or Technical Field" [R-08.2017]
This section of the MPEP guides: In determining patent eligibility,
examiners should consider whether the claim "purport( s) to improve the
functioning of the computer itself' or "any other technology or technical
field ... While improvements were evaluated in Alice Corp as relevant to
the search for an inventive concept (Step 2B), several decisions of the
Federal Circuit have also evaluated this consideration when determining
whether a claim was directed to an abstract idea (Step 2A)."
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The MPEP instructs: "Thus, an examiner may evaluate whether a
claim contains an improvement to the functioning of a computer or to any
other technology or technical field at Step 2A or Step 2B, as well as when
considering whether the claim has such self-evident eligibility that it
qualifies for the streamlined analysis." MPEP § 2106.0S(a) (emphasis
added).
Here, we consider the question of whether the claims are directed to a
specific improvement in the capabilities of the computing devices, or,
instead, "a process that qualifies as an 'abstract idea' for which computers
are invoked merely as a tool." Enfzsh, 822 F.3d at 1336.
Appellants contend the claims improve a computer related technology
because they argue the claims improve software function through the
improved payoff computations. Br. 12. Appellants argue the claims are
directed toward "generating entirely new information." Br. 13. Appellants
specifically argue:
Id.
In Alice, the Court noted that improving another technology or
technical field is a clear example of "significantly more" than
an abstract idea (relying upon the language of Diehr). Indeed,
Diehr 's use of a mathematical equation to determine when to
open a mold is one such example. Appellants note that this is
very similar to using the usage of the newly claimed equation to
determine the optimal vector in order to present the difference
between the actual encounter vector and the optimal vector in
order of payoff.
Appellants' analogy of the claims on appeal to the subject claims
considered by the court in Diehr4 is unavailing. Id. Appellants have not
4 Diamond v. Diehr, 450 U.S. 175 (1981).
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persuasively explained how the "claimed equation to determine the optimal
vector in order to present the difference between the actual encounter vector
and the optimal vector in order of payoff' is similar to the Diehr chemical
process for molding precision synthetic rubber products that involved the
transformation of a physical article (raw, uncured synthetic rubber), into a
different state or thing. See e.g., Diehr at 184:
Analyzing respondents' claims according to the above
statements from our cases, we think that a physical and
chemical process for molding precision synthetic rubber
products falls within the § 101 categories of possibly patentable
subject matter. That respondents' claims involve the
transformation of an article, in this case raw, uncured synthetic
rubber, into a different state or thing cannot be disputed.
( emphasis added).
Appellants, referring to the 2014 Interim Guidelines, also argue the
employment of a generic computer does not render claims ineligible as
Appellants claims "focus on the improvement of medical encounters and
Medicare reimbursement." Br. 15.
Turning to the Specification for context, we merely find non-limiting,
exemplary descriptions, of generic computer components:
The processor 115, in some embodiments, includes display and
visualization 340 executing on one or more servers 238, which
may be any suitable computing engine, similar to the servers
232, including but not limited to PCs or servers. The display
340 is used to construct presentation and display information to
users, such as the patient's records, billing information, and
other types of medical information. The display 340, in some
embodiments, also performs processing of some of the
functions of the processor 115.
Spec. ,r 45 ( emphasis added).
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In reviewing the record, we find the claims on appeal are silent
regarding specific limitations directed to an improved computer system,
processor, memory, network, database, or Internet. Therefore, we find
Appellants' claimed invention does not provide a solution "necessarily
rooted in computer technology in order to overcome a problem specifically
arising in the realm of computer networks," such as considered by the court
in DDR Holdings LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir.
2014) (emphasis added).
MPEP § 2106.05(b) Particular Machine [R-08.2017] and
MPEP § 2106.05(c) Particular Transformation [R-08.2017]
Section 2106.05(c) of the MPEP guides: "Another consideration
when determining whether a claim recites significantly more is whether the
claim effects a transformation or reduction of a particular article to a
different state or thing." "[T]ransformation and reduction of an article 'to a
different state or thing' is the clue to patentability of a process claim that
does not include particular machines." Bilski v. Kappas, 561 U.S. 593, 658
(2010) (quoting Gottschalkv. Benson, 409 U.S. 63, 70, 175 (1972)). If such
a transformation exists, the claims are likely to be significantly more than
any recited judicial exception. Bilski emphasizes that although the
transformation of an article is an important clue, it is not a stand-alone test
for eligibility. MPEP § 2106.05(c).
Regarding the 2019 Revised Guidance (2), we note Appellants
advance no arguments in the Briefs that are directed to the Bilski machine-
or-transformation test, which would only be applicable to the method
(process) claims on appeal.
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To the extent Appellants may contend that claim 1 transforms the
gathered and computed data (i.e., "computing a current patient encounter
vector ... computing an optimal patient encounter vector ... computing at
least one difference between the best case encounter and the current patient
encounter ... [and] computing a corresponding payoff' ( claim 1 ), our
reviewing court guides that, if not appropriately limiting, "[t]he mere
manipulation or reorganization of data, however, does not satisfy the
transformation prong." CyberSource Corp. v. Retail Decisions, Inc., 654
F.3d 1366, 1375 (Fed. Cir. 2011) (emphasis added). Therefore, we conclude
method claim 1 fails to satisfy the transformation prong of the Bilski
machine-or-transformation test. See MPEP § 2106.05( c) "Particular
Transformation."
Nor do Appellants argue that the method claims on appeal are tied to a
particular machine. See MPEP § 2106.05(b) "Particular Machine."
Arguments not made are waived. See 37 C.F.R. § 4I.37(c)(l)(iv).
MPEP § 2106.05(e) Other Meaningful Limitations [R-08.2017]
This section of the MPEP guides:
Diamond v. Diehr provides an example of a claim that recited
meaningful limitations beyond generally linking the use of the
judicial exception to a particular technological environment. 450
U.S. 175,209 USPQ 1 (1981). InDiehr, the claim was directed
to the use of the Arrhenius equation ( an abstract idea or law of
nature) in an automated process for operating a rubber-molding
press. 450 U.S. at 177-78, 209 USPQ at 4. The Court evaluated
additional elements such as the steps of installing rubber in a
press, closing the mold, constantly measuring the temperature in
the mold, and automatically opening the press at the proper time,
and found them to be meaningful because they sufficiently
limited the use of the mathematical equation to the practical
application of molding rubber products. 450 U.S. at 184, 187,
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209 USPQ at 7, 8. In contrast, the claims in Alice Corp. v. CLS
Bank International did not meaningfully limit the abstract idea
of mitigating settlement risk. 573 U.S._, 134 S. Ct. 2347, 110
USPQ2d 1976 (2014). In particular, the Court concluded that the
additional elements such as the data processing system and
communications controllers recited in the system claims did not
meaningfully limit the abstract idea because they merely linked
the use of the abstract idea to a particular technological
environment (i.e., "implementation via computers") or were
well-understood, routine, conventional activity.
MPEP § 2106.05(e).
Applying this reasoning here, and for essentially the same reasons set
forth by the Examiner, we conclude Appellants' claims do not add
meaningful limitations beyond generally linking the use of the judicial
exception to a particular technological environment. Thus, we agree with
the Examiner's finding:
The claims do not include additional elements that are sufficient
to amount to significantly more than the judicial exception
because the processor and user interface as recited are generic
computer components that perform functions (i.e., computing a
current patient encounter vector ... an optimal patient encounter
vector ... ; computing at least one difference between the best
case encounter and the current patient encounter; computing a
corresponding payoff ... ; and providing, via an EHR user
interface, in order of potential payoff, at least one difference
... ). These are generic computer functions ( organizing
information through mathematical correlations, comparing new
and stored information and using rules to identify options and
using categories to organize, store, and transmit information)
that are well understood, routine, and conventional activities
previously known to the industry.
Final Act. 4--5.
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MPEP §2106.05(!) Mere Instructions to Apply an Exception [R-08.2017]
For the reasons discussed above, in applying the 2019 Revised
Guidance, we conclude Appellants' claims invoke generic computer
components merely as a tool in which the computer instructions apply the
judicial exception, which covers mathematical concepts, in particular
computing vectors and payoff amounts which express mathematical
relationships, mathematical formulas or equations, and mathematical
calculations.
MPEP § 2106.05(g) Insignificant Extra-Solution Activity [R-08.2017]
We note the last recited step or function of independent claims 1
and 6, respectively. To the extent that data is displayed ( or otherwise made
available to the user) by the recited "providing" step or function ("providing,
via an EHR user interface, in order of potential payoff, at least one
difference between the optimal patient encounter vector and the current
patient encounter vector" - claim 1 ), we conclude such displayed or
otherwise provided data is an example of insignificant extra-solution
activity.
The Supreme Court guides that the "prohibition against patenting
abstract ideas 'cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment' or [by] adding
'insignificant postsolution activity."' Bilski, 561 U.S. at 610-11 ( quoting
Diehr, 450 U.S. at 191-92).
Therefore, on this record, we are of the view that Appellants' claims
do not operate the recited generic computer components in a manner to
achieve an improvement in computer functionality.
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MPEP § 2106.05(h) Field of Use and Technological Environment
[R-08.2017]
"[T]he Supreme Court has stated that, even if a claim does not wholly
preempt an abstract idea, it still will not be limited meaningfully if it
contains only insignificant or token pre- or post-solution activity-such as
identifying a relevant audience, a category of use,field of use, or
technological environment." Ultramercial Inc. v. Hulu LLC, 722 F.3d 1335,
1346 (Fed. Cir. 2013) (citations omitted) (emphasis added).
Here, Appellants advance no other specific arguments in the Appeal
Brief contending the claims describe a field of use that limits the abstract
idea to a particular technological environment, such that there is purportedly
no preemption.
Our reviewing court provides applicable guidance: "While
preemption may signal patent ineligible subject matter, the absence of
complete preemption does not demonstrate patent eligibility." Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015);
Ultramercial, 722 F .3d at 1346.
For the reasons discussed above, we conclude Appellants' claims do
not include additional elements that integrate the judicial exception into
a practical application (see MPEP §§ 2106.05(a}-(c), (e}-(h), as discussed
above).
The Inventive Concept
Under the 2019 Revised Guidance, 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 adds a specific limitation
beyond the judicial exception that is not "well-understood, routine,
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Application 13/747,336
conventional" in the field (see MPEP § 2106.05( d)); or, simply appends
well-understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception.
The Examiner finds the recited generic computer functions of claim 1
"are well-understood, routine and conventional activities previously known
in the industry." Final Act. 5.
We note the Examiner's Final Action (October 10, 2016) was mailed
before Berkheimer v. HP Inc. (881 F.3d 1360 (Fed. Cir. 2018)) was decided
on February 8, 2018. The Answer was mailed on August 7, 2017, and
Appellants did not file a Reply Brief. In reviewing the record, we recognize
that Appellants have not had the opportunity to argue Berkheimer. Thus,
Berkheimer (881 F.3d at 1369) and the April 19, 2018 USPTO Berkheimer
Memorandum are intervening authorities.
However, on the record before us, Appellants have not shown that the
claims on appeal add a specific limitation beyond the judicial exception that
is not "well-understood, routine, and conventional" in the field (see MPEP
§ 2106.05( d)). As discussed above, we find the Specification (i1 45)
provides non-limiting exemplary descriptions of generic computer
components that are sufficient to support the Examiner's finding.
In light of the foregoing, we conclude that each of Appellants'
claims 1-10, considered as a whole, is directed to a patent-ineligible
abstract idea that is not integrated into a practical application, and does
not include an inventive concept.
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Accordingly, for the reasons discussed above, we sustain the
Examiner's rejection B under 35 U.S.C. § 101 of claims 1-10. 5
CONCLUSIONS
The Examiner did not err in rejecting claims 1-10 under pre-AIA
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.
The Examiner did not err in rejecting claims 1-10 under U.S.C. § 101,
as being directed to a judicial exception, without significantly more.
DECISION
We affirm the Examiner's decision rejecting claims 1-10 under pre-
AIA 35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.
We affirm the Examiner's decision rejecting claims 1-10 under
35 U.S.C. § 101, as being directed to a judicial exception, without
significantly more.
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). See
37 C.F.R. § 41.50(±).
AFFIRMED
5 To the extent Appellants have not advanced separate, substantive
arguments for particular claims, or other issues, such arguments are waived.
See 37 C.F.R. § 4I.37(c)(l)(iv).
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