Ex Parte Croan

Patent Trial and Appeal Board

Dec 21, 2018

12038650 (P.T.A.B. Dec. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/038,650
139533 7590
Vobach IP Law, LLC
P.O. Box 100498
Denver, CO 80250
02/27/2008
12/25/2018
FIRST NAMED INVENTOR
Clifton D. Croan
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.
161002USP 6039
EXAMINER
GILLIGAN, CHRISTOPHER L
ART UNIT PAPER NUMBER
3626
MAIL DATE DELIVERY MODE
12/25/2018 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 CLIFTON D. CROAN
Appeal2017-002367
Application 12/038,650 1
Technology Center 3600
Before BRUCE T. WIEDER, AMEE A. SHAH, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
WIEDER, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 1-28. We have jurisdiction under
35 U.S.C. § 6(b). Oral arguments were presented December 6, 2018.
We AFFIRM.
CLAIMED SUBJECT MATTER
Appellant's invention relates to "evaluating healthcare treatment of a
patient." (Spec. ,r 6.)
1 According to Appellant, the real party in interest is Enigami Systems, Inc.
(Appeal Br. 3.)
Appeal2017-002367
Application 12/038,650
Claims 1, 18, 25, and 26 are the independent claims on appeal.
Claim 1 is illustrative. It recites:
1. A method for evaluating healthcare treatment of a patient
provided by a caregiver, comprising:
establishing one or more symptoms corresponding to a
diagnosis for the patient;
establishing a weight for each symptom;
periodically collecting data from the patient relating to
patient self-assessment of the one or more symptoms;
processing with a computer the collected patient self-
assessment of the one or more symptoms data to measure
progress of treatment including taking into account the weight
established for each symptom;
reporting the identity of a caregiver that provided
treatment for the patient and the measured progress of treatment
of the patient, based on the collected patient self-assessment of
the one or more symptoms data, to a utilization review entity that
performs database based utilization review of the caregiver that
provided treatment to the patient, wherein the utilization review
is based at least in part upon the collected data from the patient
relating to patient self-assessment of the one or more symptoms;
reporting the identity of the caregiver that provided
treatment for the patient and the measured progress of treatment
of the patient, based on the collected patient self-assessment of
the one or more symptoms data, to a healthcare organization that
determines a relative position of the caregiver in relation to the
peer group of the caregiver in treating a condition including a
caregiver performance rating.
REJECTIONS
Claims 1-28 are rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more. 2
2 The Examiner states that "[c]laims 1-27 are rejected under 35 U.S.C. 101."
(Final Action 2.) We treat the omission of dependent claim 28 as a
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Claims 1-3, 7, 8, 11-13, 15-17, 25, and 27 are rejected under
35 U.S.C § I03(a) in view of Salgado (US 2007/0226012 Al, pub.
Sept. 27, 2007), Chao (US 2006/0241974 Al, pub. Oct. 26, 2006), and Dean
(US 2006/0178569 Al, pub. Aug. 10, 2006).
Claims 18, 19, and 23 are rejected under 35 U.S.C § I03(a) in view of
Salgado, Dean, Weinert (US 2008/0177149 Al, pub. July 24, 2008), and
Chao.
Claims 4--6 and 28 are rejected under 35 U.S.C § I03(a) in view of
Salgado, Dean, Chao, and Rapaport (US 2009/0055220 Al, pub.
Feb. 26, 2009).
Claims 9, 10, and 14 are rejected under 35 U.S.C § I03(a) in view of
Salgado, Dean, Chao, and Zakim (US 7,379,885 Bl, iss. May 27, 2008).
Claim 24 is rejected under 35 U.S.C § I03(a) in view of Salgado,
Dean, Weinert, Chao, and Zakim.
Claim 20 is rejected under 35 U.S.C § I03(a) in view of Salgado,
Dean, Weinert, Chao, and Brown (US 2009/0112624 Al, pub.
Apr. 30, 2009.)
Claims 21 and 22 are rejected under 35 U.S.C § I03(a) in view of
Salgado, Dean, Weinert, Chao, and Alpsten (US 2007 /0280431, pub.
Dec. 6, 2007).
typographical error and note that Appellant similarly treats this as a
typographical error by addressing the rejection as including claim 28. (See
Appeal Br. 13.)
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The § 101 rei ection
ANALYSIS
"Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title." 35 U.S.C. § 101. Section 101, however,
"contains an important implicit exception: Laws of nature, natural
phenomena, and abstract ideas are not patentable." Alice Corp. Pty. Ltd. v.
CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quotingAss'nfor Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
Alice applies a two-step framework, earlier set out in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66
(2012), "for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts." Alice, 134 S. Ct. at 2355.
Under the two-step framework, it must first be determined if "the
claims at issue are directed to a patent-ineligible concept." Id. If the claims
are determined to be directed to a patent-ineligible concept, e.g., an abstract
idea, then the second step of the framework is applied to determine if "the
elements of the claim ... contain[] an 'inventive concept' sufficient to
'transform' the claimed abstract idea into a patent-eligible application." Id.
at 2357 (citing Mayo, 566 U.S. at 72-73, 79).
With regard to step one of the Alice framework, the Examiner
determines that the claims are "directed to the abstract idea of using patient
symptom information to assess treatment progress." (Final Action 2.) The
Examiner also determines that "the claims are directed to the abstract idea of
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"using categories to organize, store, and transmit information." (Answer 3-
4.)
Appellant disagrees and argues that "the claims are not similar to a
concept identified by the courts as abstract." (Reply Br. 3, emphasis
omitted.)
Under step one of the Alice framework, we "look at the 'focus of the
claimed advance over the prior art' to determine if the claim's 'character as a
whole' is directed to excluded subject matter." Affinity Labs of Texas, LLC
v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)).
The Specification provides evidence as to what the claimed invention
is directed. In this case, the Specification discloses that the invention relates
to "evaluating healthcare treatment of a patient." (Spec. ,r 6.) Claim 1
provides further evidence. Claim 1 recites "[a] method for evaluating
healthcare treatment of a patient ... comprising: establishing one or more
symptoms," "establishing a weight for each symptom," "collecting data from
the patient," "processing ... the collected patient ... data," and reporting
data. In other words, claim 1 is directed to establishing data, collecting data,
processing data, and reporting data.
Although we and the Examiner describe, at different levels of
abstraction, to what the claims are directed, it is recognized that "[a]n
abstract idea can generally be described at different levels of abstraction."
Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016). That
need not and, in this case does not, "impact the patentability analysis." Id.
at 1241.
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As an initial matter, we note that we have treated claims related to
assessing patient treatment and determining the efficacy of a treatment, i.e.,
the response, as abstract. See In re Grams, 888 F.2d 835 (Fed. Cir. 1989);
see also In re Meyer, 688 F.2d 789 (CCPA 1982). Indeed, Mayo itself
determined that a claim reciting "[a] method of optimizing therapeutic
efficacy for treatment" did not recite patent-eligible subject matter. See
Mayo, 566 U.S. at 74.
More particularly, "we have treated collecting information, including
when limited to particular content ( which does not change its character as
information), as within the realm of abstract ideas." Elec. Power Grp.,
830 F.3d at 1353. "In a similar vein, we have treated analyzing information
by steps people go through in their minds, or by mathematical algorithms,
without more, as essentially mental processes within the abstract-idea
category." Id. at 1354. Here, the limitations recited in claim 1 could be
performed by a person using a pencil and paper, or with ordinary mental
steps. 3 See id. at 1355. "And we have recognized that merely presenting the
results of abstract processes of collecting and analyzing information, without
more (such as identifying a particular tool for presentation), is abstract as an
ancillary part of such collection and analysis." Id. at 1354. "Here, the
claims are clearly focused on the combination of those abstract-idea
processes." Id.
Moreover, the limitations of claim 1 do not recite implementation
details. Instead, they recite functional results to be achieved. In other
words, claim 1 does not recite "a particular way of programming or
3 Claim 1 refers to a computer only for the generic purpose of processing
data, i.e., "processing ... the collected patient self-assessment."
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designing the software ... , but instead merely claim[ s] the resulting
[method]." Apple, Inc., 842 F.3d at 1241. "Indeed, the claim language here
provides only a result-oriented solution, with insufficient detail for how a
computer accomplishes it. Our law demands more." Intellectual Ventures I
LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1342 (Fed. Cir. 2017).
In view of the above, we agree with the Examiner that claim 1 is
directed to an abstract idea.
Step two of the Alice framework has been described "as a search for
an ' "inventive concept" '-i.e., an element or combination of elements that
is 'sufficient to ensure that the patent in practice amounts to significantly
more than a patent upon the [ineligible concept] itself."' Alice, 134 S. Ct.
at 2355 (citing Mayo, 566 U.S. at 72-73).
Appellant argues that the reporting elements of claim 1 are not "well-
understood, routine, and conventional activities previously known in the
pertinent industry." (Appeal Br. 14--16.) We do not find this argument
persuasive. Rather, we agree with the Examiner that
it is the additional elements (i.e. generic computer hardware) that
have been identified as performing routine and conventional
functions. For example the only additional element recited in
claims 1, 25, and 26 is a "computer" that processes the collected
symptom data to measure progress. This "computer["] is recited
at the highest degree of generality and merely serves to link the
abstract idea to a particular technological environment. This type
of measurement (i.e. comparing previously collected values to
currently collected values) is a routine, conventional, and well-
understood activity of any general purpose computer. Claim 18
similarly recites a "data processing system" at a high degree of
generality that merely server [sic] to link the abstract idea to a
particular technological environment. Furthermore, Appellant's
specification identifies conventional hardware for implementing
the above described functionality (see paragraph 0021).
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(Answer 5.) To the extent Appellant argues that the Examiner made an
unsupported finding of fact that it was well-understood to use a computer to
not only process data, but to also collect and report data, we do not find this
argument persuasive of reversible error. (See Reply Br. 16.) As discussed
above, Alice and Electric Power would support such a finding. See Alice,
134 S. Ct. at 2359; see also Elec. Power Grp., 830 F.3d at 1355.
Also, "[i]t has been clear since Alice that a claimed invention's use of
the ineligible concept to which it is directed cannot supply the inventive
concept that renders the invention 'significantly more' than that ineligible
concept." BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed.
Cir. 2018).
Appellant argues that "the Examiner made the same mistake as the
district court in [BASCOM Global Internet Services, Inc. v. AT&T Mobility
LLC, 827 F.3d 1341 (Fed. Cir. 2016)] -- he failed to consider the claim as an
ordered combination." (Reply Br. 5.)
In BASCOM, the court determined that "an inventive concept can be
found in the non-conventional and non-generic arrangement of known,
conventional pieces." BASCOM, 827 F.3d at 1350. Specifically, "[t]he
inventive concept described and claimed in the '606 patent is the installation
of a filtering tool at a specific location, remote from the end-users, with
customizable filtering features specific to each end user." Id. at 1350. The
Federal Circuit determined that this "particular arrangement of elements is a
technical improvement over prior art ways of filtering." Id. Appellant does
not indicate what element(s) in claim 1 correspond to, e.g., the "filtering tool
at a specific location, remote from the end-users," nor does Appellant
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indicate how the claimed arrangement of steps is a technical improvement
over the prior art. Therefore, we do not find this argument persuasive.
Considered as an ordered combination, the instructions in claim 1 add
nothing that is not already present when the steps are considered separately.
The claims do not, for example, purport to improve the functioning of a
computer. Nor do they effect an improvement in any other technology or
technical field. Instead, the claims at issue amount to nothing significantly
more than an instruction to apply the abstract idea. That is not enough to
transform an abstract idea into a patent-eligible invention.
Appellant further argues that "[ t ]he claims should be analyzed under
the streamlined analysis because they do not seek to tie-up an abstract idea."
(Reply Br. 8, emphasis omitted.)
We understand this argument to be rooted in preemption. However,
preemption is not a separate test.
To be clear, the proper focus is not preemption per se, for some
measure of preemption is intrinsic in the statutory right granted
with every patent to exclude competitors, for a limited time, from
practicing the claimed invention. See 35 U.S.C. § 154. Rather,
the animating concern is that claims should not be coextensive
with a natural law, natural phenomenon, or abstract idea; a
patent-eligible claim must include one or more substantive
limitations that, in the words of the Supreme Court, add
"significantly more" to the basic principle, with the result that
the claim covers significantly less. See Mayo 132 S. Ct. at 1294
[566 U.S. at 72-73].
CLS Banklnt'l v. Alice Corp. Pty. Ltd., 717 F.3d 1269, 1281 (Fed. Cir.
2013) (Lourie, J., concurring), aff'd, 134 S. Ct. 2347 (2014). Moreover,
"[ w ]here a patent's claims are deemed only to disclose patent ineligible
subject matter under the Mayo framework, as they are in this case,
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preemption concerns are fully addressed and made moot." Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
In other words, "preemption may signal patent ineligible subject matter,
[but] the absence of complete preemption does not demonstrate patent
eligibility." Id.
Appellant seeks to analogize claim 1 to "Example 21 of the July 2015
Examples."4 (Appeal Br. 17.) In particular, Appellant argues that, in view
of Example 21, "a claim that confines an abstract idea to a particular useful
application is reciting patent eligible subject matter" and that "claim 1 is
such a particularized useful application."
However, the Update simply presents hypothetical examples. (See
Update Appendix 1.) Also, claim 2 in Example 21 recites "[a] method of
distributing stock quotes over a network to a remote subscriber computer"
including the steps of
transmit[ing] the formatted stock quote alert over a
wireless communication channel to a wireless device associated
with a subscriber based upon the destination address and
transmission schedule,
wherein the alert activates the stock viewer application to
cause the stock quote alert to display on the remote subscriber
computer and to enable connection via the URL to the data
source over the Internet when the wireless device is locally
connected to the remote subscriber computer and the remote
subscriber computer comes online.
(Id. at 3.) The Update Appendix explains that
4 See July 2015 Update: Subject Matter Eligibility (July 2015) (available at
https://www.uspto.gov/sites/default/files/documents/ieg-july-2015-
update.pdf); see also July 2015 Update Appendix 1: Examples (July 2015)
(available at https://www.uspto.gov/sites/default/files/documents/ieg-july-
2015-app 1.pdf) ("Update Appendix").
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[t]he claimed invention addresses the Internet-centric challenge
of alerting a subscriber with time sensitive information when the
subscriber's computer is offline. This is addressed by
transmitting the alert over a wireless communication channel to
activate the stock viewer application, which causes the alert to
display and enables the connection of the remote subscriber
computer to the data source over the Internet when the remote
subscriber computer comes online.
(Id. at 4.)
Claim 1 in Example 21 is similar to claim 2 except that Claim 1 lacks
the stock viewer application; and, thus, does not address "the Internet-centric
challenge of alerting a subscriber ... when the subscriber's computer is
offline" or "enable[] the connection of the remote subscriber computer to the
data source over the Internet when the remote subscriber computer comes
online." Claim 1 in Example 21 is described as patent ineligible. (Id. at 3-
4.) Appellant does not persuasively argue why establishing symptoms and a
weight for each symptom, collecting data from a patient, and processing and
reporting the data, is analogous to addressing "the Internet-centric challenge
of alerting a subscriber ... when the subscriber's computer is offline" and,
in particular, "enables the connection of the remote subscriber computer to
the data source over the Internet when the remote subscriber computer
comes online." (See id. at 4.)
Nor does Appellant persuasively argue why Appellant's claim 1 is
analogous to claim 2 in Example 21, but not analogous to claim 1 in
Example 21.
Appellant also seeks to analogize claim 1 to the claims in Amdocs
(Israel) Limited v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016).
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(Reply Br. 12-13.) Specifically, Appellant argues that "Appellant's claims
are clearly more detailed and narrowly tailored than claim 1 of AMDOCS.
Thus, the Appellant's claims are clearly confined to a particularly useful
applications." (Id. at 13.) We do not find this argument persuasive.
Claim 1 of Amdocs recites "computer code for using the accounting
information with which the first network accounting record is correlated to
enhance the first network accounting record." Amdocs, 841 F.3d at 1299
( emphasis added). In an earlier opinion, Amdocs (Israel) Limited v. Openet
Telecom, Inc., 761 F.3d 1329 (Fed. Cir. 2014) ("Amdocs I"), the court had
"construed 'enhance' as meaning 'to apply a number of field enhancements
in a distributed fashion.' [Amdocs I] at 1340. We took care to note how the
district court explained that '[i]n this context, "distributed" means that the
network usage records are processed close to their sources before being
transmitted to a centralized manager.' [Amdocs I] at 1338." Amdocs, 841
F.3d at 1300.
Here, Appellant does not explain what limitation(s) in claim 1
correspond to the claim element "to enhance the first network accounting
record," and more "narrowly tailor[]" the claim when the term "enhance" is
properly construed. (See Reply Br. 13.)
Additionally, Appellant seeks to analogize the claims to those in, e.g.,
Thales Visionix, Inc. v. United States, 850 F.3d 1343 (Fed. Cir. 2017) and
Finjan, Inc. v. Blue Coat Systems, Inc., 879 F.3d 1299 (Fed. Cir. 2018).
(Supp. Br. 5-7. 5) We disagree. Appellant conflates the technical
5 "Supp. Br." refers to the supplemental brief Appellant filed on
December 3, 2018. In filing the supplemental brief, Appellant cited MPEP
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improvements in Thales, i.e., the use of sensors in a non-conventional
manner to reduce measurement errors (Thales, 850 F.3d at 1348--49), and
Finjan, i.e., the behavior-based virus scan that improved computer
functionality (Finjan, 879 F.3d at 1304---05), with the claimed improvement
to a method for assessing healthcare treatment that uses a generic computer
to perform a generic computer function, i.e., processing data. See, e.g.,
Alice, 134 S. Ct. at 2359.
Appellant also seeks to analogize the claims to those in Ancora
Technologies, Inc. v. HTC America, Inc., 908 F.3d 1343 (Fed. Cir. 2018).
(Supp. Br. 9-10.) Specifically, Appellant argues that inAncora, "the
Federal Circuit once again emphasized the focus on a particular type of data
being used" and that "Appellant's claims are similar in that patient symptom
data is being utilized - not all forms of data." (Id.) We disagree. Unlike
Appellant's claims, "[ t ]he claimed method [ in Ancora] specifically identifies
how that functionality improvement is effectuated in an assertedly
unexpected way: a structure containing a license record is stored in a
particular, modifiable, non-volatile portion of the computer's BIOS." See
Ancora, 908 F.3d at 1348. In other words, in Ancora, "[t]he asserted
§ 1205.02 as permitting such supplemental briefing. (Supp. Br. 1.) MPEP
§ 1205.02 states that "[e]xcept as provided for in§§ 41.41, 41.47 and 41.52,
any argument or authorities not included in the appeal brief will be refused
consideration by the Board for purposes of the present appeal." It further
states that "[ t ]his sentence is not intended to preclude the filing of a
supplemental brief or document if new authority should become available or
relevant after the brief or reply brief is filed." However, MPEP § 1205.02
does not itself authorize the filing of a supplemental brief. Board
authorization for supplemental briefing should be obtained under 37 C.F.R.
§ 41.50(d) prior to filing. In this instance, however, we will consider
Appellant's supplemental brief.
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innovation of the patent relates to where the license record is stored ....
The inventive method uses a modifiable part of the BIOS memory-not
other computer memory-to store the information that can be used." Id.
The asserted innovation in Ancora is not, as Appellant argues, the type of
data that is stored. Therefore, we do not find Appellant's argument
persuasive.
Appellant's other arguments have been considered but are not deemed
persuasive of reversible error.
Independent claims 18, 25, and 26 contain similar language and
Appellant makes similar arguments. (See Appeal Br. 8-13 and 19-27.)
Therefore, for similar reasons, we are not persuaded of reversible error. The
dependent claims are not separately argued and fall with the independent
claims. See 37 C.F.R. § 4I.37(c)(l)(iv).
The § 103 (a) reiections
Double-counting
The Examiner finds that Salgado discloses "establishing a weight for
each symptom (see paragraph 0020)" and "periodically collecting data from
the patient relating to patient self-assessment of the one or more symptoms
(see paragraph 0020)." (Final Action 3.) Specifically, the Examiner finds
that the
step of selecting which symptoms will be used in calculating a
composite score, as disclosed at paragraph 0020 of Salgado, is
encompassed by the broad limitation of establishing a weight for
each symptom. This is because the act of selecting certain
symptoms for calculating the composite score amounts to
assigning those symptoms a "weight" of 1 and assigning the non-
selected symptoms as "weight" of O.
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(Answer 8.)
Appellant disagrees and argues that "the Examiner is double-counting
the portion of Salgado that discusses "establishing one or more symptoms
corresponding to a diagnosis for the patient" and the additional claim
limitation of "establishing a weight for each symptom" (Reply Br. 22), and
that "[ t ]he same portion of the Salgado reference cannot be used to teach
both "establishing a weight for each symptom" and "patient self-assessment
of the one or more symptoms." (Id.; see also Appeal Br. 28-31.)
We agree that"[ w ]here a claim lists elements separately, 'the clear
implication of the claim language' is that those elements are 'distinct
component[s]' of the patented invention." Becton, Dickinson and Co. v.
Tyco Healthcare Grp, LP, 616 F.3d 1249, 1254 (Fed. Cir. 2015), quoting
Gaus v. Conair Corp., 363 F.3d 1284, 1288 (Fed. Cir. 2004); see also
Appeal Br. 20-21. However, we are not persuaded of error.
Claim 1 recites, "establishing one or more symptoms corresponding to
a diagnosis for the patient; establishing a weight for each symptom; [and]
periodically collecting data from the patient relating to patient self-
assessment of the one or more symptoms."
Salgado discloses "[a] method for diagnosing, assessing, and
determining of [sic] the efficacy of a treatment regimen for chronic
rhinosinusitis." (Salgado, Abstract.) In particular, Salgado discloses an
invention that "in its basic form is a method to numerically score and report
symptoms of chronic rhinosinusitis wherein the scores are representative of
the presence and/or severity of the chronic rhinosinusitis symptoms." (Id.
,r 19.) In particular, the method of Salgado comprises
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(a) conducting at least two interviews of one or more a patients
over the duration of a treatment regimen to collect patient-
reported information specific to clinical severity of one or more
of a plurality of symptoms related to chronic rhinosinusitis; (b)
the at least two interviews comprising one or more patients
assigning an individual symptom score for each of the one or
more symptoms within the plurality of symptoms at the time of
said interviews; ( c) selecting two or more individual symptoms
of plurality [sic] of symptoms for use in calculating a composite
score which reflects clinical status of said chronic rhinosinusitis
in said one or more patients at the time said interview was
conducted.
(Id. ,I 20.)
In other words, Salgado discloses a first patient interview in which a
patient reports the severity of symptoms, i.e., at least establishes one or more
symptoms. The patient assigns a score for each symptom, e.g., a value of
"1" for a first reported symptom, and a value of" 1" for a second reported
symptom. Salgado also discloses a second interview, i.e., "at least two
interviews ... over the duration of a treatment regimen." (Id.) Once again,
the patient assigns a score for each symptom, e.g., a value of "1" for the
aforementioned first reported symptom, and, now, a value of "O" for the
aforementioned second reported symptom. That is, a weight is established
for each symptom, and the weight for each symptom may vary over time,
i.e., the progress of treatment is measured over time. Therefore, we are not
persuaded that the Examiner is impermissibly "double-counting."
Alternatively, the Examiner finds that "the assigning of an individual
symptom score to each symptom, as disclosed at paragraph 0020 of Salgado,
could also be considered, and is encompassed by, the broad limitation of
establishing a weight for each symptom." (Answer 9.)
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In other words, Salgado discloses collecting both symptom and
severity of symptom information from patients. That is, Salgado discloses
"assigning an individual symptom score [(a weight)] for each of the one or
more symptoms within the plurality of symptoms [ ( established symptoms)]
at the time of said interviews." (Salgado ,r 20.) Therefore, for this reason
also, we are not persuaded that the Examiner is impermissibly "double-
counting."
Appellant presents similar arguments for independent claim 25. (See
Appeal Br. 41--44.) For similar reasons, we are not persuaded of error.
Processing by a computer
Appellant also argues that claim 1 recites "processing with a computer
the collected patient self-assessment," and that the disclosure in Salgado that
"the present invention can be embodied as a method, data processing system,
or computer program product" (Salgado ,r 95), is a "broad-brush
statement[]" that does "not provide the express level of detail required for a
finding of obviousness." (Reply Br. 23; see also Appeal Br. 31-32.)
We disagree. Salgado teaches that "the present invention can be
embodied as a ... computer program product" (Salgado ,r 95), i.e., that the
invention of Salgado can be processed by a computer. And Salgado teaches
that the invention includes processing the collected patient self-assessment
data, i.e., "selecting two or more individual symptoms ... for use in
calculating a composite score which reflects clinical status of said chronic
rhinosinusitis in said one or more patients" and "calculating a composite
score" (id. ,r 20). (See Answer 9-10.) In short, Appellant's arguments do
not persuade us that that the Examiner committed reversible error.
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Appellant presents similar arguments for independent claims 18
and 25. (See Appeal Br. 36-37, 44--45.) For similar reasons, we are not
persuaded of error.
Reporting the progress of treatment
Appellant argues "that the cited combination of references [ does not]
teach[] the claim element "reporting ... the measured progress of
treatment." (Appeal Br. 32, emphasis omitted.) In particular, Appellant
argues that neither "Chao by itself or in combination with the other
references teaches the claim limitation 'reporting ... the measured progress
of treatment."' (Reply Br. 24, emphasis omitted; see also Appeal Br. 32-
35 .) "The Chao reference has absolutely no interest in progress of treatment
based on the patient's self-assessment of symptoms. (Reply Br. 24.) We do
not find this argument persuasive of reversible error.
Paragraph 19 of Salgado teaches that the disclosed invention "is a
method to numerically score and report symptoms of chronic rhinosinusitis."
(Salgado ,r 19.) And paragraph 20 of Salgado teaches determining the
measured progress of treatment based on the information reported by
patients during interviews. (See supra; see also Salgado ,r 20.) Therefore,
we agree with the Examiner's finding that "Salgado teaches reporting the
measured progress of treatment." (Final Action 3--4.)
With regard to reporting to a utilization review entity, the Examiner
finds that
Dean teaches collecting patient self-assessment of one or more
symptoms (see paragraph 0017; patient records the patient's
symptoms on the interview instrument); and reporting the self-
assessment of the one or more symptoms to a utilization review
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entity that performs utilization review based at least in part upon
the collected data from the patient relating to patient self-
assessment of the one or more symptoms (see paragraph 0052;
collected data is reported to private or public insurers to
determine to what extent charges incurred by the patient are
reimbursable). It would have been obvious to one of ordinary
skill in the art at the time of the invention to add this type of
reporting to the system of Salgado for the purpose of providing
adequate documentation of symptoms to third party pay ors ( see
paragraph 0007 of Dean).
(Final Action 4--5, emphasis added.) In view of Salgado's teaching of
reporting the measured progress of treatment based on patients' self-
assessments, and Dean's teaching of reporting self-assessments to a
utilization review entity (supra), we agree with the Examiner that it would
have been obvious "to add [Dean's] type of reporting to the system of
Salgado." (See Final Action 4--5.)
Appellant presents similar arguments for independent claims 18
and 25. (See Appeal Br. 37--40, 45--48.) For similar reasons, we are not
persuaded of error.
Healthcare organization that determines the relative position of the
caregiver
Appellant argues that the cited portions of Chao (paragraphs 50, 51,
and 70), "fail[] to teach the claim limitation 'healthcare organization that
determines a relative position of the caregiver in relation to the peer group of
the caregiver in treating a condition including a caregiver performance
rating."' (Reply Br. 31, emphasis omitted; see also Appeal Br. 3 5-3 6.)
The Examiner, however, determines "that this limitation is recited as
an intended use of the reported information in the claim." (Answer 11.)
"An intended use or purpose usually will not limit the scope of the claim
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because such statements usually do no more than define a context in which
the invention operates." Boehringer Ingelheim Vetmedica, Inc. v. Schering-
Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). Appellant does not
respond to this determination and, thus, we are not persuaded of error.
Regardless, the Examiner also finds, and we agree, that
Chao teaches the system is "operable to compare the peer
averages, which are calculated based on a composite of cases
matching Cardiologist A's cases, with Cardiologist A's average
to determine if he is doing better or worse than his peer and
highlight the comparison results accordingly on a display" (see
paragraph 0050). Furthermore, Chao teaches that the
performance evaluation is converted to an average percentage
(see paragraph 0051 ). Therefore, Chao clearly teaches a
healthcare organization determining a relative position of a
caregiver in relation to a peer group of the caregiver in treating a
condition including a caregiver performance rating as claimed.
(Answer 11.) Additionally, paragraph 6 of Chao discloses that "[a] need
exists for a comprehensive, automated system and method for accurately
peer profiling the performance of an individual ... employed by an
organization." (Chao ,r 6.) And, the Examiner determines that "[i]t would
have been obvious to one of ordinary skill in the art at the time of the
invention to add this type of reporting to the system of Salgado for the
purpose of accurately comparing physician performance to peer profiles ( see
paragraph 0006 of Chao)." (Final Action 4.)
Appellant disagrees and argues that "the Chao reference is concerned
with financial metrics rather than how well a caregiver treats a particular
condition. The peer review that Chao discusses is how efficiently a
physician uses hospital resources -- not how effective a caregiver is in
treating a particular condition." (Reply Br. 32.)
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We do not find this argument persuasive. As an initial matter, we
note that the claim language is broad enough to encompass both the
symptomatic and financial evaluations of caregiver performance, e.g., "the
utilization review is based at least in part upon the collected data from the
patient." (See Claim 1, emphasis added.)
Moreover, Chao merely adds a familiar element ( comparing or
ranking) to the combination (reporting the measured progress of treatment)
according to a known method. See KSR Int'! Co. v. Teleflex Inc., 550 U.S.
398, 416 (2007) ("The combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results."); see also Final Action 4. In view of the above, we are not
persuaded of error.
Appellant presents similar arguments for independent claim 18. (See
Appeal Br. 40-41.) For similar reasons, we are not persuaded of error.
Improper rationale for combining references
Appellant argues:
The Examiner's Answer Brief asserts that the motivation to
combine the references comes from the Chao reference.
However, as has previously been discussed, Chao is focused on
economics. Chao does not care about patient self-assessment of
symptoms or the effectiveness of a caregiver in treating a patient.
Therefore, the assertion that Chao would be motivated to look to
Salgado is truly a hindsight approach. Such an approach is
impermissible.
(Reply Br. 33; see also Appeal Br. 48-54.)
The Examiner determines that
the prior art itself clearly states that a need exists for "accurately
peer profiling the performance of an individual or other entity
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employed by an organization" (see paragraph 0006 of Chao). In
the case of Chao, that individual is clearly a healthcare provider
and the organization is clearly a healthcare organization. As
previously set forth, Salgado is directed to a healthcare provider
providing treatment to a patient and evaluating the progress of
the treatment. Therefore, it would have been obvious to one of
ordinary skill in the art at the time of the invention to look from
Salgado to the teachings of Chao for the aforementioned reasons.
(Answer 12.)
Salgado discloses "[a] method for diagnosing, assessing, and
determining of [sic] the efficacy of a treatment regimen." (Salgado,
Abstract.) Specifically, Salgado discloses analyzing the collected patient
information "to determine the efficacy of the treatment regimen" (id. ,r 20),
and using the collected information "for later analysis of the total sinus
symptom scores from a patient population" (id. ,r 95). Chao discloses a
method for "peer profiling the performance of an individual," e.g., a
physician providing treatment. (Chao ,r,r 6, 50.) In particular, Chao
discloses sorting collected patient case information by severity level "to
compare the peer averages, which are calculated based on a composite of
cases matching Cardiologist A's cases, with Cardiologist A's averages to
determine if he is doing better or worse than his peer." (Id. ,r 50.)
"Under the correct analysis, any need or problem known in the field
of endeavor at the time of invention and addressed by the patent can provide
a reason for combining the element in the manner claimed." KSR Int 'l Co.,
550 U.S. at 420. Here, Chao discloses the known problem of "accurately
peer profiling the performance of an individual," and the use of patient case
information to do so. (Chao ,r 6; see also id. ,ISO.) Salgado discloses
collecting and using patient case information to determine the efficacy of
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treatment. (See, e.g., Salgado ,r,r 20, 95; see also id., Abstract.) In view of
the above, we are not persuaded that the Examiner erred in determining that
"it would have been obvious to one of ordinary skill in the art at the time of
the invention to look from Salgado [(using patient case information to
evaluate caregiver provided treatment)] to the teachings of Chao [ ( using
patient case information to evaluate a caregiver providing treatment)] for the
aforementioned reasons." (See Answer 12.)
Appellant also argues that "[ t ]he Office also does not explain how nor
why a Chao's system of reviewing physicians for fiscal performance ...
would be combinable with the rhinosinusitis system of Salgado." (Appeal
Br. 52.) However, "[t]he test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the structure of the
primary reference." In re Keller, 642 F.2d 413,425 (CCPA 1981). Rather,
the test is "whether the claimed invention[ is] rendered obvious by the
teachings of the prior art as a whole." In re Etter, 756 F.2d 852, 859 (Fed.
Cir. 1985). For the reasons discussed above, we do not find this argument
persuasive of error.
With regard to Dean, Appellant argues that combination of Salgado
and Dean is improper because "Dean shows no interest in reporting self-
assessment of symptoms to third party payors" (Appeal Br. 53), and
"Salgado shows no interest in reporting to a utilization review entity" and
that "there is no reason to do so" (Reply Br. 33-34).
We disagree. Dean discloses "an interview instrument implemented
as a computer program, generating a screen display, and accessible and used
by either or both of the clinician and the patient to record and track the
symptoms." (Dean ,r 1 7; see also id. Abstract.) Dean also discloses that "in
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some instances the interview instrument may be reviewed by a third party"
such as "private or public insurers" and "regulatory agencies charged with
reviewing quality of patient care." (Id. ,r 52; see also id. ,r 7.) Thus,
contrary to Appellant's assertion, Dean discloses reporting the interview
instrument, including patient-recorded symptoms, to third party payors.
Therefore, we do not find Appellant's argument persuasive of error.
Prima (acie case
Appellant argues that the Examiner did not present a prima facie case
of obviousness for claims 1-25, 27, and 28. (See Appeal Br. 28, 36, 41.)
The USPTO carries its procedural burden of establishing a prima facie
case when its rejection satisfies the requirements of 35 U.S.C. § 132 by
notifying the applicant of the reasons for rejection, "together with such
information and references as may be useful in judging of the propriety of
continuing the prosecution of [the] application." In re Jung, 637 F.3d 1356,
1362 (Fed. Cir. 2011) (brackets in original, quoting 35 U.S.C. § 132(a)).
Particularly in view of Appellant's response to the Examiner's stated reasons
for the obviousness rejections, we do not agree that the Examiner did not
notify Appellant of the reasons for the rejection.
DECISION
The Examiner's rejection of claims 1-28 under 35 U.S.C. § 101 is
affirmed.
The Examiner's rejections of claims 1-25, 27, and 28 under 35 U.S.C.
§ 103(a) is affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
25