Ex Parte FAFARA

Patent Trials and Appeals Board

Apr 15, 2019

14686430 - (D) (P.T.A.B. Apr. 15, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/686,430 04/14/2015
909 7590 04/17/2019
Pillsbury Winthrop Shaw Pittman, LLP
PO Box 10500
McLean, VA 22102
FIRST NAMED INVENTOR
Glen Michael FAFARA
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.
057618-0438554 1089
EXAMINER
BURGESS, JOSEPH D
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
04/17/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docket_ip@pillsburylaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GLEN MICHAEL F AF ARA
Appeal2017-008876
Application 14/686,430
Technology Center 3600
Before MURRIEL E. CRAWFORD, ANTON W. PETTING, and
BIBHU R. MOHANTY, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner's
final rejection of claims 1-16. We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
Appeal2017-008876
Application 14/686,430
THE INVENTION
Appellant1 claims a system and method for communicating health
care information and/or facilitating health care services via a hybrid
architecture (Spec. ,r 2).
Claim 1 is representative of the subject matter on appeal.
1. A method for facilitating health care services via a hybrid
architecture including a social media platform and a computer
system external to the social media platform, comprising:
monitoring, by the computer system external to the social
media platform, the social media platform for social media
communications distributed within the social media platform;
obtaining, by the computer system, a social media
communication of a user of the social media platform based on
the monitoring of the social media platform, wherein the social
media communication indicates a hash value corresponding to a
health care item related to a health care service, and wherein the
hash value is based on hashing of information identifying the
health care item;
processing, by the computer system, the hash value and
other information of the social media communication to
determine the health care service and the health care item related
to the health care service;
obtaining, by the computer system, information associated
with the health care service, wherein the information indicates a
health care service provider;
generating, by the computer system, a user request for the
health care service and the health care item based on the
information associated with the health care service; and
providing, by the computer system, the user request to the
health care service provider.
1 According to Appellant, the real party in interest is Systems Made Simple,
Inc. See App. Br. 2.
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Application 14/686,430
THE REJECTIONS
Claims 1-16 are rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more.
Claims 1, 2, 4, 5, 8-10, 12, 13, and 16 are rejected under 35 U.S.C.
§ 103 as being unpatentable over Knobel (US 2014/0330842 Al; publ. Nov.
6, 2014) in view of Lynch (US 2015/0149208 Al; publ. May 28, 2015).
Claims 3 and 11 are rejected under 35 U.S.C. § 103 as being
unpatentable over Knobel in view of Lynch in further view of Longman (US
2006/0229910 Al; publ. Oct. 12, 2006).
Claims 6 and 14 are rejected under 35 U.S.C. § 103 as being
unpatentable over Knobel in view of Lynch in further view of Loncar (US
2008/0238666 Al; publ. Oct. 2, 2008).
Claims 7 and 15 are rejected under 35 U.S.C. § 103 as being
unpatentable over Knobel in view of Lynch in further view of Baeza (US
2006/0129444 Al; publ. June 15, 2006).
ANALYSIS
35 U.S.C. § 101 REJECTION
We will sustain the rejection of claims 1-16 under 35 U.S.C. § 101.
The Supreme Court
set forth a framework for distinguishing patents that
claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible
applications of those concepts. First, ... determine
whether the claims at issue are directed to one of
those patent-ineligible concepts .... If so, ... then
ask, "[ w ]hat else is there in the claims before us?"
. . . To answer that question, . . . consider the
elements of each claim both individually and "as an
ordered combination" to determine whether the
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additional elements "transform the nature of the
claim" into a patent-eligible application .... [The
Court] described step two of this analysis 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 Corp. Pty. Ltd. v. CLS Bank Int'!, 573 U.S. 208, 217-18 (2014) (citing
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72-73
(2012)) ( citations omitted).
To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept. The Federal Circuit has
explained that "the 'directed to' inquiry applies a stage-one filter to claims,
considered in light of the [S]pecification, based on whether 'their character
as a whole is directed to excluded subject matter."' See Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir.
2015)). It asks whether the focus of the claims is on a specific improvement
in relevant technology or on a process that itself qualifies as an "abstract
idea" for which computers are invoked merely as a tool. See id. at 1335-36.
In so doing we apply a "directed to" two prong test: 1) evaluate
whether the claim recites a judicial exception, and 2) if the claim recites a
judicial exception, evaluate whether the judicial exception is integrated into
a practical application. 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50, 50-57 (Jan. 7, 2019) ("Guidance").
The Examiner determines that the claims are directed to monitoring
social media for communication which is an example of comparing new and
stored information. Final Act. 3) More specifically, the claims are directed
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to monitoring social media and communicating health care information
and/ or facilitating health care services . The Examiner finds "the claims do
not include limitations amounting to significantly more than the abstract
idea." (Final Act. 3.)
The disclosed claimed invention is directed to a method and system
for monitoring and communicating health care information and/ or
facilitating health care services via a hybrid architecture in which
anonymized health care information is obtained from social media and used
to generate a user's request for a health care service from a health care
provider. (Spec. 2). The invention facilitates healthcare services by
enabling users to request and obtain health care services via a social media
platform. (Spec. 3). Claim 1 recites the steps of "monitoring ... the social
media platform," "obtaining ... communication .. wherein the social media
communication indicates a hash value corresponding to a health care item,"
processmg ... information associated with a health care service,"
"obtaining ... information associated with a health care service wherein the
information indicates a health care service provider," "generating ... a user
request for health care service," and "providing ... user request to the health
care service provider." As such, claim 1 is directed to monitoring and
communicating health care information and/or facilitating health care
services by generating a user's request for a health care service from a health
care provider. The health care provider is determined by the computer
system based on the information received from social media. As such, claim
1 recites a method of monitoring information on social media and facilitating
healthcare services based on the information. Therefore, claim 1 is directed
to monitoring, sending and receiving data in aid of facilitating healthcare
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and as such is a certain method of organizing human activity, i.e. managing
interactions between people, which is a judicial exception. Guidance, 84
Fed. Reg. at 52.
Turning to the second prong of the "directed to" test, claim 1 requires
a "social media platform," "a computer system." The recitations of a social
media platform and a computer system do not impose "a meaningful limit on
the judicial exception, such that the claim is more than a drafting effort
designed to monopolize the judicial exception." Guidance, 84 Fed. Reg. at
53. In this regard, the recitations do not affect an improvement in the
functioning of the social media platform or the computer system or other
technology, do not recite a particular machine or manufacture that is integral
to the claims, and do not transform or reduce a particular article to a
different state or thing. Id.
The introduction of a computer into the claims does not alter the
analysis at Alice.
[T]he mere recitation of a generic computer cannot
transform a patent-ineligible abstract idea into a
patent-eligible invention. Stating an abstract idea
"while adding the words 'apply it'" is not enough
for patent eligibility. Nor is limiting the use of an
abstract idea "'to a particular technological
environment.'" Stating an abstract idea while
adding the words "apply it with a computer" simply
combines those two steps, with the same deficient
result. Thus, if a patent's recitation of a computer
amounts to a mere instruction to "implemen[t ]" an
abstract idea "on . . . a computer," that addition
cannot impart patent eligibility. This conclusion
accords with the preemption concern that
undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
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implementation is not generally the sort of
"additional featur[e]" that provides any "practical
assurance that the process is more than a drafting
effort designed to monopolize the [ abstract idea]
itself."
Alice, 573 U.S. at 223-24 (alterations in original) (citations omitted).
Instead, "the relevant question is whether the claims here do more
than simply instruct the practitioner to implement the abstract idea ... on a
generic computer." Id. at 225. They do not.
Claim 1 does not integrate the judicial exception into a practical
application and is therefore is directed to an "abstract idea."
Turning to the second step of the Alice analysis, because we find that
the claims are directed to abstract ideas/judicial exceptions, the claims must
include an "'inventive concept'" in order to be patent-eligible, i.e., there
must be an element or combination of elements that is sufficient to ensure
that the claim in practice amounts to significantly more than the abstract idea
itself. See Alice, 573 U.S. at217-18 (alteration in original) (quoting Mayo,
566 U.S. at 72-73).
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer system to monitor, obtain, process data and apply decision criteria
to data, and modify the data as a result amounts to electronic data query and
retrieval----one of the most basic functions of a computer. All of these
computer functions are well-understood, routine, conventional activities
previously known to the trading industry. See Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016); see also In re Katz, 639
F.3d 1303, 1316 (Fed. Cir. 2011) ("Absent a possible narrower construction
of the terms 'processing,' 'receiving,' and 'storing,' ... those functions
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can be achieved by any general purpose computer without special
programming"). In short, each step does no more than require a generic
computer to perform generic computer functions.
Considered as an ordered combination, the computer components of
Appellant's claims add nothing that is not already present when the steps are
considered separately. The sequence of data reception-analysis-access-
display is equally generic and conventional or, otherwise, held to be abstract.
See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014)
(sequence of receiving, selecting, offering for exchange, display, allowing
access, and receiving payment recited an abstraction), Inventor Holdings,
LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017)
(holding that sequence of data retrieval, analysis, modification, generation,
display, and transmission was abstract), Two-Way Media Ltd. v. Comcast
Cable Commc 'ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (holding
sequence of processing, routing, controlling, and monitoring was abstract).
The ordering of the steps is, therefore, ordinary and conventional.
The claims do not, for example, purport to improve the functioning of
the social media platform or the computer system. The claims do not affect
an improvement in any other technology or technical field. The
Specification discloses that the computer system that performs the steps of
claim 1 includes a plurality of hardware, software, and/or firmware
components operating together to provide the functionality recited in claim
1. (Spec. ,r 48). The computer system may include generic components
such as a digital processor, an analog processor, a digital circuit designed to
process information, an analog circuit designed to process information, a
state machine, and/or other mechanisms for electronically processing
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information. (Spec. ,r 50.) Thus, the claims at issue amount to nothing
significantly more than instructions to apply the abstract idea of information
access using some unspecified, generic computer. Under our precedents,
that is not enough to transform an abstract idea into a
patent-eligible invention. See Alice, 573 U.S. at 225-26.
We are not persuaded of error on the part of the Examiner by
Appellant's argument that the Examiner overgeneralizes the claims in order
to identify the alleged abstract idea. Specifically, the Appellant argues that
the Examiner failed to consider the specific recitations in the claims. (App.
Br. 9.) Appellant's argument is not persuasive at least because there is no
requirement that the Examiner's formulation of the abstract idea copy the
claim language. The Examiner's characterization here, moreover, is fully
consistent with the language of claim 1. In addition, as we stated above, in
that the claims are directed to sending and receiving data in aid of
facilitating health care services, the claims are clearly directed to organizing
human activities which is an abstract idea. That claim 1 includes more
words than the phrase the Examiner used to articulate the abstract idea to
which the claim is directed is an insufficient basis to persuasively argue that
the claim language has been mischaracterized, or that the Examiner has,
otherwise, failed to consider all of the limitations of the claim. See Apple,
Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240-41 (Fed. Cir. 2016).
An abstract idea can generally be described at different levels of
abstraction. As the Examiner has done, the claimed abstract idea could be
described as comparing new and stored information and using rules to
identify options or as sending and receiving data in aid of matching a user
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with a health care professional as we have done. It could be described in
other ways as well.
We are also not persuaded of error on the part of the Examiner by
Appellant's argument that the Examiner failed to consider each claim as a
whole when assessing whether the claim amounts to significantly more than
merely an abstract idea. (App. Br. 10.) Specifically, the Appellant argues
that the Examiner has failed to identify the additional claim features other
than the alleged abstract idea. In addition to the abstract idea recited in
claim 1, a social media platform and a cornputer system
are also recited. The Examiner con-ectly identified these features and
determined that the socia1 media platform and cornputer systern are
generic computer components that perfonn generic functions that are
well-understood, routine, and conventional. (Final Act. 3.) Therefore, the
Examiner has considered the recitations in claim 1 that are not directed to
the articulated abstract idea.
\Ve also are not persuaded that the Examiner en-ed because the
Examiner does not address the manner in which the claimed social rnedia
communication is obtained, processed, and the manner in which the request
is generated. (App. Br. 11.) However, these recitations are part of the
abstract idea itself and, thus, are covered by the Examiner's articulation of
the abstract idea. For example, claim l recites various steps i.e. monitoring,
obtaining, processing, generating, and providing which relate to the
Examiner's articufated abstract idea of comparing new and stored
infonnation using rules to identify options. These steps are also part of the
abstract idea of sending and receiving data in aid of facilitating healthcare
services.
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\Ve are not persuaded of en-or on the part of the Examiner by
Appellant's argument that the claims are necessarily rooted in computer
technology and are thus analogous to the claims in DDR Holdings, LLC v.
Hotels.com, L.P. 773 F.3d 1245 (Fed. Cir. 2014). (App. Br. 12-13.) In
DDR Holdings, the Court evaluated the eligibility of claims "address[ing]
the problem of retaining website visitors that, if adhering to the routine,
conventional functioning of Internet hyperlink protocol, would be
instantly transported away from a host's website after 'clicking' on an
advertisement and activating a hyperlink." DDR, 773 F.3d at 1257. There,
the Court found that the claims were patent eligible because they
transformed the manner in which a hyperlink typically functions to
resolve a problem that had no "pre-Internet analog." Id. at 1258. The
Court cautioned, however, that not all claims purporting to address
Internet-centric challenges are eligible for a patent. Id. For example, in
DDR Holdings, the Court distinguished the patent-eligible claims at issue
from claims found patent-ineligible in Ultramercial. See DDR, 773 at
1258-59 (citing Ultramercial, 772 F.3d at 715-16). As noted there, the
Ultramercial claims were "directed to a specific method of advertising and
content distribution that was previously unknown and never employed on
the Internet before." Id. at 1258 (quoting Ultramercial, 772 F.3d at
714). Nevertheless, those claims were patent-ineligible because they
"merely recite[d] the abstract idea of 'offering media content in exchange
for viewing an advertisement,' along with 'routine additional steps such as
updating an activity log, requiring a request from the consumer to view the
ad, restrictions on public access, and use of the Internet."' Id. ( quoting
Ultramercial, 772 F.3d at 715-16).
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Claim 1 is analogous to claims found ineligible in Ultramercial and
distinct from claims found eligible in DDR Holdings. The ineligible
claims in Ultramercial recited "providing [a] . . . media product for sale at
an Internet website;" "restricting general public access to said media
product;" "receiving from the consumer a request to view [a] ...
sponsor message;" and "if the sponsor message is an interactive message,
presenting at least one query to the consumer and allowing said consumer
access to said media product after receiving a response to said at least one
query." Ultramercial, 772 F.3d at 712. Similarly, Appellant's asserted
claims recite receiving, analyzing, modifying, and transmitting data. This
is precisely the type of Internet activity found ineligible in Ultramercial.
We do not agree with the Appellant that the claims recite features
other than what is well-understood, routine and conventional because the
prior art does not teach or suggest the claims. To the extent Appellant
maintains that the limitations of claim 1 necessarily amount to "significantly
more" than an abstract idea because the claimed apparatus is allegedly
patentable over the prior art, Appellant misapprehend the controlling
precedent. Although the second step in the Alice/li4ayo framework is termed
a search for an "'inventive concept,"' the analysis is not an evaluation of
novelty or non-obviousness, but rather, a search for "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, 573 U.S. at217-18 (internal citation omitted). A
novel and nonobvious claim directed to a purely abstract idea is,
nonetheless, patent-ineligible. See Mayo, 566 U.S. at 90-91.
\Ve are not persuaded of e1Tor on the part of the Examiner by
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Appellant's argument that there was no analysis of the ordered combination.
Appellant contends that BASCOA1 Global Internet Servs. v. AT&T Mobility
LLC, 827 F.3d 1341 (Fed. Cir. 2016) provides guidance in relation to the
second step of the two-step framework for determining patent-eligibility.
(Reply Br. 13.). Appellant asserts that, the Examiner failed to consider
whether the present claims as a whole and as an ordered combination, recite
an inventive concept under the second step of the patent-eligibility analysis.
Specifically, Appellant argues that, in BASCOA1, the Federal Circuit held
that inventive concept inquiry requires more than recognizing that each
claim element, by itself, was known in the art, because the inventive concept
can be found in the non-conventional and non-generic arrangement of '-- .__.,
known conventional pieces. (Reply Br. 12.)
\Ve do not agree that the Examiner failed to consider the claim as a .._,
whole. On pages 3----4 of the Final Office Action, the Examiner states that
the claimed functions of rnonitoring social media, obtaining social media
cornmunication, processing social media comrmmication, obtaining
infonnation, generating user requests, and providing a user request are
generic computer functions that are well-understood, routine, and
conventional activities. The Examiner finds that these functions do not add
meaningful limitations to the articulated abstract idea to a particular
environment, that is, implemented via computers. In consideration of the
clairn as a whole, the Exarniner notes that the as filed Specification at
paragraphs 14-15 discloses the system that includes a generic computer
system of one or rnore servers and one or more processors that
communicates with one of more client computer platforms. We conclude
that the Examiner considered the claims as a whole.
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\Ve are not persuaded that the claims recite an improvement to
technology or a technical field by extending the utility of the social media
platforms (Reply Br. 16). Specifically, Appellants argue that the claimed
invention enables a user of a social media platform to utilize existing
capabilities of the social media platform to initiate user request for a health
care service without revealing sensitive infmmation. The alleged
improvement that Appellant touts does not concern an improvement to
social media platform capabilities, but instead relates to an alleged
improvement in the process of facilitating health care services for which an
existing social media platform is used as a tool in its ordinary capacity.
In view of the foregoing, we will sustain the Examiner's rejection of
claim 1. \Ne will also sustain this rejection as it is directed to claims 2----16
because the Appellant has not argued the separate eligibility of these claims.
35 U.S.C. § 103 REJECTIONS
We will not sustain this rejection because we agree with the Appellant
that the prior art does not disclose generating a user request for the health
care service and the health care item based on the information associated
with the health care service, as required by claim 1.
The Examiner relies on paragraph 42 of Knobel for teaching this
subject matter. (Final Act. 5.) vVe find that paragraph 42 discloses that the
system searches publicly available Twitter posts for keywords and hashtags
related to diabetes, for example. Upon identifying a tweet by a particular
user and deten11ining that it likely contains a help request, the server imports
the tweet and creates a help request and associates the help request with the
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tweet ID. The help request is then matched with helpers. Therefore, Knobel
discloses that the help request is first formulated and then the request is
matched with a helper. Claim l requires that the user request is generated
based on infonnation whkh already indicates a health care provider. As
such, claim 1 requires obtaining information indicating a health service
provider before the request is generated.
In view of the foregoing, we will not sustain the Examiner's rejections
of claim 1 and claims 2----8 dependent therefrom. \Ve will also not sustain the
r~jections as they are directed to claims 9-16 because these claims require
the same subject matter.
CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 1-16 under
35 U.S.C. § 101. The Examiner did err in rejecting claims 1-16 under 35
U.S.C. § 103.
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DECISION
The decision of the Examiner to reject claims 1-16 is affirmed.
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
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