Ex Parte Curran et al

Patent Trial and Appeal Board

Feb 22, 2017

13074892 (P.T.A.B. Feb. 22, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/074,892 03/29/2011 Charles Lamar Curran 050704/402918 1634
99434 7590 02/24/2017
McKesson Corporation and Alston & Bird LLP
c/o Alston & Bird LLP
Bank of America Plaza
101 South Tryon St., Suite 4000
Charlotte, NC 28280-4000
EXAMINER
COLEMAN, CHARLES P.
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
02/24/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
u sptomail @ alston .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHARLES LAMAR CURRAN and RONALD L. CORDELL
Appeal 2015-000764
Application 13/074,8921
Technology Center 3600
Before MURRIEL E. CRAWFORD, BRUCE T. WIEDER, and
AMEE A. SHAH, Administrative Patent Judges.
WIEDER, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35U.S.C. § 134 from the
Examiner’s rejection of claims 1—20. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART and enter a NEW GROUND OF
REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b).
1 According to Appellants, the real party in interest is McKesson Financial
Holdings Limited. (Appeal Br. 2.)
Appeal 2015-000764
Application 13/074,892
CLAIMED SUBJECT MATTER
Appellants’ claimed invention relates “generally to a mechanism of
generating one or more patient health care summary documents.” (Spec.
11.)
Claims 1, 9, and 17 are the rejected independent claims. Claim 1 is
illustrative. It recites:
1. A method comprising:
receiving medical information, associated with one or
more patients, from one or more different health care entities;
identifying one or more unique codes from the received
medical information, the unique codes corresponding to one or
more code terminologies related to one or more types of medical
data;
receiving a request from one of the one or more different
health care entities for a patient health care summary document
corresponding to a patient;
analyzing the medical information received from the
health care entity to identify one or more code terminologies
utilized by the health care entity; and
generating, via a processor, the patient health care
summary document, in response to receipt of the request from
the health care entity, the patient health care summary document
is generated based in part on at least one of the code
terminologies determined to be utilized by the health care entity.
REJECTIONS
Claims 1—3, 5—11, 13—17, and 19—20 are rejected under 35 U.S.C.
§ 101 as being directed to non-statutory subject matter.
Claims 1—20 are rejected under 35 U.S.C. § 103(a) as unpatentable in
view of Green (US 2011/0264466 Al, pub. Oct. 27, 2011), Sie
(US 2011/0146231 Al, pub. Oct. 6, 2011), and Johnson (US 5,664,109,
iss. Sept. 2, 1997).
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Application 13/074,892
ANALYSIS
The § 101 rejection of claims 1—3, 5—11, 13—17, and 19—20
In the Answer, the Examiner enters a new ground of rejection under
§ 101 for claims 1—3, 5—11, 13—17, and 19—20. The Examiner determines
that “[t]he claim(s) is/are directed to the abstract idea of (i) a method of
organizing human activities and/or (ii) a mathematical relationship or
formula.” (Answer 3.) The Examiner also determines that “[t]he additional
element(s) or combination of elements in the claim(s) other than the abstract
idea per se amount(s) to no more than: (i) mere instructions to implement the
idea on a computer, and/or (ii) recitation of generic computer structure that
serves to perform generic computer functions.”
Appellants argue that that the Examiner has not presented a prima
facie case of unpatentability under § 101. (Reply Br. 2-4.) Specifically,
Appellants argue that “the Examiner’s Answer fails to specifically point out
factual evidence that supports a finding that claims 1—3, 5—11, 13—17 and
19—20 are directed to an abstract idea.” (Reply Br. 3.)
We disagree. 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.’” See In
re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (brackets in original, quoting
35 U.S.C. § 132). Here, the Examiner notifies Appellants that the claims are
directed to a patent-ineligible abstract idea, i.e., that the claims are “directed
to the abstract idea of (i) a method of organizing human activities and/or (ii)
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Application 13/074,892
a mathematical relationship or formula.” (Answer 3.) Thus, Appellants
have been notified of the reasons for the rejection with such information “as
may be useful in judging of the propriety of continuing the prosecution of
[the] application.” See id.
Prior to this rejection being made, the Supreme Court decided Alice
Corp. Pty Ltd. v. CLS Banklnt’l, 134 S. Ct. 2347 (2014). Alice applies a
two-part framework, earlier set out in Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 132 S. Ct. 1289 (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-part framework, it must first be determined if “the
claims at issue are directed to one of those patent-ineligible concepts.” Id.
If the claims are determined to be directed to a patent-ineligible concept,
then the second part of the framework is applied to determine “‘[w]hat else
is there in the claims before us?’ To answer that question, we consider the
elements of each claim both individually and ‘as an ordered combination’ to
determine whether the additional elements ‘transform the nature of the
claim’ into a patent-eligible application.” Id.
Appellants argue that the claimed invention is not directed to an
abstract idea because the claims require identifying “one or more unique
codes from the received medical information” and “receiving a request from
one of the one or more different health care entities.” (Reply Br. 5.)
We disagree. “The focus of the asserted claims ... is on collecting
information, analyzing it, and displaying [i.e., generating a report that
presents] certain results of the collection and analysis.” Electric Power
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Application 13/074,892
Grp., LLCv. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016).
“Accordingly, 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.” Id. Thus, we are not
persuaded that the Examiner erred in determining that the claims are directed
to the abstract idea of organizing human activities, i.e., receiving, analyzing,
and generating/displaying information.
With regard to the second part of the Alice framework, Appellants
argue that “the Examiner should consider elements of each claim, both
‘individually’ and ‘as an ordered combination,’ for purposes of determining
whether the elements in the claims are directed to ‘something more’ and are
thereby transformed into a patent-eligible invention.” (Reply Br. 4.)
Moreover, Appellants argue, the claims are directed to “something more”
than an abstract idea. (Reply Br. 14—17.) In particular, Appellants argue
that the claimed invention relates “to a solution for an improved technique
for ensuring that a health care entity that requests a patient health care
summary document receives the requested patient health care summary
document coded with terminologies understood by the requesting health care
entity.” (Reply Br. 15—16.) In other words, Appellants argue that the
“something more” is to provide a summary in terms the requesting party will
understand. In support of Appellants’ argument, Appellants point to
paragraph 3 of the Specification and the problem of different coding systems
from different health care entities that “may cause a loss of fidelity in the
data that is being exchanged.” (Id.; see also Spec. 13.)
We are not persuaded that providing information to a requester in
terms the requester will understand constitutes “something more” than the
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Application 13/074,892
abstract idea. “[Mjerely selecting information, by content or source, for
collection, analysis, and display does nothing significant to differentiate a
process from ordinary mental processes, whose implicit exclusion from §101
undergirds the information-based category of abstract ideas.” Electric
Power Grp., 830 F.3d at 1355. Moreover, the claims “do not include any
requirement for performing the claimed functions ... by use of anything but
entirely conventional, generic technology. The claims therefore do not state
an arguably inventive concept.” Id. at 1356. In short, each step does no
more than require a generic computer processor to perform generic computer
functions. See Spec. 25 (describing use of generic computers). And
considered as an ordered combination, the computer components of
Appellants’ method add nothing that is not already present when the steps
are considered separately.
Therefore, we are not persuaded that the Examiner erred in rejecting
claims 1—3, 5—11, 13—17, and 19—20 are rejected under § 101.
The ft103 rejection
Appellants argue that
Johnson, alone or in combination with Green and Sie, is
altogether silent and does not teach or suggest that the “health
care summary” therein is generated based on any code
terminologies related to one or more types of medical data
that are determined to be utilized by any health care entity that
requests a patient health care summary document
corresponding to a patient, as would be required per
independent claim 1.
(Appeal Br. 11, footnote omitted.)
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Application 13/074,892
The Examiner answers that
Green et al. teach one or more code terminologies utilized by the
health care entity, analyzing the medical information received
and generating the patient document (Green et al., [0002],
[0003]—[0013], [0045]). Sie et al. teach one or more patients and
one or more different health care entities (Sie et al., [0002],
[0003], [0019], [0111]). Johnson et al. teach a health car [sic]
summary document (Johnson et al., Figure 5, Figure 7, col 2,[]
11 13-26, col 13,119-11 ).
(Answer 5; see also Final Action 3 4.)
The Examiner does not indicate where the cited art teaches or
suggests determining that the code terminologies used in the summary are
utilized by the requesting health care entity. In other words, the Examiner
does not indicate where the cited art teaches or suggests that “the patient
health care summary document is generated based in part on at least one of
the code terminologies determined to be utilized by the health care entity,”
as recited in claim 1.
Therefore, we are persuaded that the Examiner erred in rejecting
claim 1 and dependent claims 2—8 under § 103. Independent claims 9
and 17 include similar language and for similar reasons we are persuaded
that the Examiner erred in rejecting claims 9 and 17 and dependent claims
10-16 and 18-20.
New ground of rejection: §101 rejection of dependent claims 4, 12, and 18
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a NEW
GROUND OF REJECTION against dependent claims 4, 12, and 18 under
35 U.S.C § 101.
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As discussed above, the focus of the claimed invention is on the
abstract idea of receiving, analyzing, and generating/presenting certain
results of the collected and analyzed information. Dependent claims 4 and
12 recite “wherein the patient health care summary document comprises a
continuity of care document.” The Specification provides no definition for
the term “continuity of care document” that would indicate that designating
a patient health care summary as comprising a continuity of care document
alters the focus of the claim from the abstract idea of receiving, analyzing,
and generating/presenting certain results of the collected and analyzed
information.
Dependent claim 18 recites that “the patient health care summary
document further comprises excluding one or more items of the received
medical information designated as private from the generated patient health
care summary document.” Presenting certain results of the collected and
analyzed information, i.e., excluding some of the collected information
while presenting other information, has been treated “as within the realm of
abstract ideas.” See Electric Power Grp., 830 F.3d at 1353.
Therefore, we determine that claims 4, 12, and 18 are directed to an
abstract idea, i.e., receiving, analyzing, and generating/presenting certain
results of the collected and analyzed information.
We now apply the second part of the framework to determine if “the
elements of the claim . . . contain[] an ‘inventive concept’ sufficient to
‘transform’ the claimed abstract idea into a patent-eligible application.”
Alice Corp., 134 S. Ct. at 2357 (citing Mayo, 132 S. Ct. at 1294, 1298).
We determine that merely designating a patient health care summary
as comprising a particular type of document, i.e., a continuity of care
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document, does not transform the claimed subject matter into patent-eligible
subject matter. We also determine that merely excluding some of the
collected information while presenting other information, i.e., limiting the
content presented, does not transform the claimed subject matter into patent-
eligible subject matter. Moreover, taking the claim elements separately, the
function performed by the computer processor is purely conventional and
adds no inventive concept. Nor do the claims offer detail about the
computer system. In short, the claim steps/limitations do no more than
require a generic computer to perform generic computer functions.
Considered as an ordered combination, the computer processor of
Appellant’s claimed invention adds nothing that is not already present when
the steps are considered separately. Viewed as a whole, Appellant’s claims
simply recite the concept of receiving, analyzing, and generating/presenting
certain results of the collected and analyzed information. The claims do not,
for example, purport to improve the functioning of the computer itself. 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 of receiving, analyzing, and
generating/presenting certain results of the collected and analyzed
information. That is not enough to transform an abstract idea into a patent-
eligible invention. See id. at 2360.
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Appeal 2015-000764
Application 13/074,892
DECISION
The Examiner’s rejection of claims 1—3, 5—11, 13—17, and 19—20
under 35 U.S.C. § 101 is affirmed.
The Examiner’s rejection of claims 1—20 under 35 U.S.C. § 103(a) is
reversed.
We enter a NEW GROUND OF REJECTION of claims 4, 12, and 18
under 35 U.S.C. § 101.
This decision contains a NEW GROUND OF REJECTION pursuant
to 37 C.F.R. § 41.50(b). Section 41.50(b) provides that, “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” Section 41.50(b) further provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THIS DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the Examiner, in which event the
proceeding will be remanded to the Examiner.
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record.
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-IN-PART; 37 C.F.R, $ 41,501b)
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