Ex Parte Cox et al

Patent Trials and Appeals Board

Jun 27, 2019

15007555 - (D) (P.T.A.B. Jun. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
15/007,555 01/27/2016
45725 7590 06/27/2019
Walder Intellectual Property Law PC
1701 N. Collins Blvd.
Suite 2100
Richardson, TX 75080
FIRST NAMED INVENTOR
James S. Cox
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.
SVL920150154US 1 7764
EXAMINER
PAULSON, SHEETAL R.
ART UNIT PAPER NUMBER
3626
MAIL DATE DELIVERY MODE
06/27/2019 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 JAMES S. COX, ANTHONY J. DIGIORGIO, DAVID J. GATTIS,
TUSHAR KUMAR JAY ANTILAL, and WILLIAM R. PATTERSON
Appeal2018-003912
Application 15/007 ,555 1
Technology Center 3600
Before DENISE M. POTHIER, JASON J. CHUNG, and
MATTHEW J. McNEILL, Administrative Patent Judges.
McNEILL, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-4, 7-14, and 17-24, which are all the claims pending
in this application. Claims 5, 6, 15, and 16 are canceled. Final Act. 2. We
have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
1 According to Appellants, the real party in interest is the Applicant,
International Business Machines Corporation. App. Br. 2.
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Application 15/007 ,555
STATEMENT OF THE CASE
Introduction
Appellants' application relates to implement a patient care plan
creation and management system to correlate patient data across multiple
patient data sources. Spec. ,r,r 3-7. Claim 1 illustrates the appealed subject
matter and reads as follows:
1. A method, in a data processing system compnsmg a
processor and a memory, wherein the memory comprises
instructions which are executed by the processor to specifically
configure the processor to implement a patient care plan creation
and management (PCPCM) system, for correlating patient data
across multiple patient data sources, comprising:
generating, by the PCPCM system of the data processing
system, a patient registry, in a patient registry database,
comprising a plurality of patient registry records, each patient
registry record being a data structure stored in the patient registry
database in association with a corresponding patient and
comprising personal and medical information about the
corresponding patient, wherein the personal and medical
information about the corresponding patient is obtained
electronically from a plurality of sources, wherein the plurality
of sources are computing systems providing patient data
including the personal and medical information about the
corresponding patient;
compiling, by at least one of a demographic and medical
data analysis engine, or a lifestyle data analysis engine, of the
PCPCM system, for a patient in the patient registry, a variable
list associated with an input variable of a clinical rule, in a
clinical rules database, and storing the variable list in a variable
list cache memory, wherein the variable list comprises a plurality
of instances of different personal information and different
medical information from the plurality of sources, where each
instance of personal information and medical information
provides evidence of a different characteristic of the
corresponding patient which, when analyzed in combination
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with other instances in the variable list, are indicative of a value
to be assigned to the input variable;
processing, by the PCPCM system of the data processing
system, the clinical rule, in the clinical rules database, that
references the variable, at least by evaluating a criteria for setting
the value of the variable based on results of processing of the
variable list associated with the variable to determine if the
criteria is satisfied by the plurality of instances in the variable
list;
and generating, by the PCPCM system of the data
processing system, results of the processing of the clinical rule,
wherein processing the clinical rule comprises:
determining, for each variable in the clinical rule,
whether a variable list is stored in the variable list cache
memory for the variable, and
in response to a variable list being stored in the
variable list cache memory for the variable, processing a
combination of entries in the variable list cache memory
corresponding to the instances of personal information and
medical information in the stored variable list for that
variable, to determine a corresponding value for that
variable which is thereafter used to process the clinical
rule.
The Examiner's Rejection2
Claims 1-4, 7-14, and 17-24 stand rejected under 35 U.S.C. § 101 as
being directed to patent-ineligible subject matter. Final Act. 2-6.
2 The Examiner rejected claims 1-4, 7-14, and 17-24 under 35 U.S.C.
§§ 102 and 103 in the Final Act. See Final Act. 6-15. However, the
Examiner withdrew these rejections in the Answer. See Ans. 7-13. Thus,
these rejections are not presently before us.
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ANALYSIS
Patent-Ineligible Subject Matter
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 'l, 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, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 192
( 1981) ); "tanning, dyeing, making waterproof cloth, vulcanizing India
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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 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. (internal citation omitted) ( 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 ( citation 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, 566 U.S. at 77).
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"[M]erely requir[ing] generic computer implementation[] fail[ s] to transform
that abstract idea into a patent-eligible invention." Id.
The PTO recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) ("Revised Guidance"). Under that 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 MPEP § 2106.05(a}-(c), (e}-(h)).
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 are 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.
Revised Guidance Step 1
Step 1 of the Revised Guidance asks whether the claimed subject
matter falls within the four statutory categories of patentable subject matter
identified by 35 U.S.C. § 101: process, machine, manufacture, or
composition of matter. Claim 1 recites "a method." Appellants do not argue
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the Examiner erred in concluding claim 1 falls within the four statutory
categories of patentable subject matter. We agree with the Examiner's
conclusion because claim 1 falls within the process category.
Revised Guidance Step 2A, Prong 1
Under Step 2A, Prong 1 of the Revised Guidance, we determine
whether the claims recite 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). See Revised Guidance.
Claim 1 recites a method comprising a series of steps, including,
among others, (1) generating a patient registry, (2) compiling variable list
associated with an input variable of a clinical rule, and (3) processing a
clinical rule by evaluating a criteria for setting the value of the variable,
wherein processing the clinical rule comprises (3 a) determining whether a
variable list is stored in the variable list cache memory, and (3b) processing
a combination of entries in the variable list cache memory.
The Examiner concludes claim 1 is directed to "generating an
indication of results based on satisfied rules incorporating variables." Final
Act. 2. According to the Examiner, this merely encompasses collecting
information, analyzing it, and displaying certain results of the collection and
analysis. Id. at 3-4 (citing Electric Power Group, LLC v. Alston S.A., 830
F.3d 1350 (Fed. Cir. 2018)).
The Examiner further concludes the claims recite an abstract idea at a
high level of generality, without providing any specificity using
conventional computer functions that do not add meaningful limits to
practicing the abstract idea. Id. at 2-3.
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Appellants argue the Examiner erred in concluding claim 1 is directed
to an abstract idea. See App. Br. 6-18; Reply Br. 3-17. In particular,
Appellants argue the Examiner oversimplifies and overgeneralizes the
claims, failing to consider the specific mechanisms of the present invention
with regard to the specific way the specially configured data processing
system processes clinical rules. App. Br. 7. Appellants argue that like the
claims found patent eligible in McRO, the claimed rules, not the use of a
computer, improve an existing technological process instead of simply using
the computer as a tool. Id. at 10-11 ( citing McRO Inc. v. Bandai Namco
Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2018)).
Under the Revised Guidance, abstract ideas include "mathematical
concepts," "certain methods of organizing human activity," and "mental
processes." Revised Guidance at 52. These "certain methods of human
activity" include:
Id.
[F]undamental 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).
The Examiner concludes claim 1 is directed to collecting information,
analyzing it, and displaying certain results of the collection and analysis.
Final Act. 3-4; Ans. 14. However, we conclude the features recited in claim
1 do not fit within the "certain methods of organizing human activity," or
any of the other categories, identified in the Revised Guidance.
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Moreover, even if the claims fit within "certain methods of organizing
human activity," we agree with Appellants that this is an oversimplification
and overgeneralization of the claims. As noted by the court in McRO, we
look to whether claims focus on specific means or methods that improve
relevant technology or are instead directed to a result or effect that itself is
the abstract idea, merely invoking generic processes and machinery. McRO,
837 F.3d at 1314. We agree with Appellants that the claims at issue here
focus on the specific means of improving database technology to correlate
patient data across multiple sources rather than merely claiming the effect or
result of such an improvement. For example, the Specification discloses
"[t]he present application relates generally to an improved data processing
apparatus and method and more specifically to mechanisms for performing
caching of patient information using variable lists and evaluating patient
rules based on the variable lists." Spec. ,r 1; see id. ,r,r 157-166.
Furthermore, claims 1, 11, and 20 recite limitations related to this described
technical improvement. App. Br. 43-50 (Claims App'x).
Accordingly, we do not sustain the patent-ineligibility rejection of
claim 1. We also do not sustain the patent-ineligibility rejection of
independent claims 11 and 20, which recite commensurate limitations, and
dependent claims 2-4, 7-10, 12-14, 17-19, and 21-24.
DECISION
We reverse the Examiner's decision rejecting of claim 1-4, 7-14, and
17-24 under 35 U.S.C. § 101.
REVERSED
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