Ex Parte Hane et al

Patent Trial and Appeal Board

Jul 30, 2018

13200462 (P.T.A.B. Jul. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/200,462 09/23/2011
71130 7590 08/01/2018
SEYFARTH SHAW LLP
WORLD TRADE CENTER EAST
TWO SEAPORT LANE, SUITE 300
BOSTON, MA 02210-2028
FIRST NAMED INVENTOR
Christopher A. Hane
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.
23845.700021 4215
EXAMINER
TOMASZEWSKI, MICHAEL
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
08/01/2018 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):
bosippto@seyfarth.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER A. HANE, VIJA Y S. NORI,
JEAN W. RAWLINGS, DAVID R. ANDERSON,
REGINA GOGOL and JOHN M. BRILLANTE
Appeal2017-002217
Application 13/200,462
Technology Center 3600
Before CAROLYN D. THOMAS, CARL W. WHITEHEAD JR. and
JEREMY J. CURCURI, Administrative Patent Judges.
WHITEHEAD JR., Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants are appealing the final rejection of claims 1, 3, 4, 6, 8-10,
12, 13, 15, 17, 18 and 22 under 35 U.S.C. § 134(a). Appeal Brief 13-20.
We have jurisdiction under 35 U.S.C. § 6(b) (2012).
We affirm.
Introduction
The invention is directed to, "comparing healthcare data and more
particularly relates to an apparatus, system, and method for comparing
healthcare data." Specification, paragraph 2.
Appeal2017-002217
Application 13/200,462
Illustrative Claim
1. A computer-implemented method for analyzing healthcare
information in a computer system specially configured for comparing
healthcare data
compnsmg:
receiving healthcare data including indicia indicating the healthcare
data is for geographic regions, the healthcare data comprising healthcare
data structured as healthcare variables stored in a first database; and
healthcare data structured as clinical data stored in a second database;
analyzing, with the computer system specially configured for
comparing healthcare data, one or more healthcare variables for geographic
regions, where analyzing the one or more healthcare variables comprises:
assigning in the computer system specially configured for
comparing healthcare data each geographic region to one ofN clusters
in response to the one or more healthcare variables, where N is a
number greater than 1, each geographic region in a cluster has similar
health care variables, and each cluster comprises at least a first
geographic region and a second geographic region, where the first
geographic region is non-contiguous with the second geographic
reg10n;
identifying, in the computer system specially configured for
comparing healthcare data, a group of statistically similar clusters
from the N clusters;
unassigning in the computer system specially configured for
comparing healthcare data each geographic region assigned to clusters
not in the identified group of statistically similar clusters; and
2
Appeal2017-002217
Application 13/200,462
reassigning in the computer system specially configured for
comparing healthcare data each unassigned geographic region to a
cluster in the identified group of statistically similar clusters;
analyzing, with the computer system specially configured for
comparing healthcare data, the clinical data for geographic regions,
where analyzing the clinical data comprises:
determining in the computer system specially configured for
comparing healthcare data a primary magnitude for each geographic
region of a primary measure by quantifying a value of the primary
measure within each of the geographic regions;
determining in the computer system specially configured for
comparing healthcare data a secondary magnitude for each geographic
region of a secondary measure by quantifying a value of the
secondary measure within each of the geographic regions;
comparing with the computer system specially configured for
comparing healthcare data the primary magnitude to the secondary
magnitude for each geographic region; and
displaying the analysis of the one or more healthcare variables
in combination with the analysis of the clinical data, wherein
displaying comprises overlaying the analysis of the clinical data on
the analysis of the healthcare variables.
Rejection on Appeal
Claims 1, 3-4, 6, 8-10, 12-13, 15, 17-18 and22 stand rejected under
35 U.S.C. §101 because of the claimed invention is directed to a judicial
exception (i.e., a law of nature, a natural phenomenon, or an abstract idea)
without significantly more. Final Rejection 2-3.
3
Appeal2017-002217
Application 13/200,462
ANALYSIS
Rather than reiterate the arguments of Appellants and the Examiner,
we refer to the Appeal Brief (filed July 6, 2016), the Reply Brief (filed
December 5, 2016), the Answer (mailed October 6, 2016) and the Final
Action (mailed February 8, 2016) for the respective details.
35 U.S.C. §101 Rejection
The Supreme Court has set forth an analytical "framework for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts." Alice Corp. Pty. Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2355
(2014) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566
U.S. 66, 71-73 (2012)). In the first step of the analysis, we determine
whether the claims at issue are "directed to" a judicial exception, such as an
abstract idea. Alice, 134 S. Ct. at 2355. If not, the inquiry ends. Thales
Visionix Inc. v. US., 850 F.3d 1343, 1346 (Fed. Cir. 2017); Enfzsh, LLC v.
Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016). If the claims are
determined to be directed to an abstract idea, then we consider under step
two whether the claims contain an "inventive concept" sufficient to
"transform the nature of the claim into a patent-eligible application." Alice,
134 S. Ct. at 2355 (quotations and citation omitted).
Noting that the two stages involve "overlapping scrutiny of the
content of the claims," the Federal Circuit has described "the first-stage
inquiry" as "looking at the 'focus' of the claims, their 'character as a
whole,"' and "the second-stage inquiry (where reached)" as "looking more
precisely at what the claim elements add--specifically, whether, in the
Supreme Court's terms, they identify an 'inventive concept' in the
4
Appeal2017-002217
Application 13/200,462
application of the ineligible matter to which (by assumption at stage two) the
claim is directed." Electric Power Grp, LLC v. Alstom S.A., 830 F.3d 1350,
1353 (Fed. Cir. 2016). In considering whether a claim is directed to an
abstract idea, we acknowledge, as did the Court in Mayo, that "all inventions
at some level embody, use, reflect, rest upon, or apply laws of nature, natural
phenomena, or abstract ideas." Mayo, 566 U.S. at 71.
Step One: Whether the Claims Are Directed to a Patent-Ineligible
Concept (Abstract Idea)
The Examiner finds that the claims are directed to an abstract idea
because, "Processing healthcare information is an abstract idea because it
uses categories to organize, store, and transmit information, etc.; collecting
and comparing known information; obtaining and comparing intangible
data; and/ or comparing new and stored information; comparing data using
mathematical/relationships/formulas; etc." Final Action 2. Appellants
recite:
"The fact that a claim is directed to an improvement in computer-
related technology can demonstrate that the claim does not recite
a concept similar to previously identified abstract ideas." See The
Office's May 19, 2016 Memorandum "Recent Subject Matter
Eligibility Decisions."
Appeal Brief 15.
Our reviewing court has held:
We do not read Alice to broadly hold that all
improvements in computer-related technology are inherently
abstract and, therefore, must be considered at step two. Indeed,
some improvements in computer-related technology when
appropriately claimed are undoubtedly not abstract, such as a
chip architecture, an LED display, and the like. Nor do we think
that claims directed to software, as opposed to hardware, are
inherently abstract and therefore only properly analyzed at the
second step of the Alice analysis. Software can make non-
5
Appeal2017-002217
Application 13/200,462
abstract improvements to computer technology just as hardware
improvements can, and sometimes the improvements can be
accomplished through either route. We thus see no reason to
conclude that all claims directed to improvements in computer-
related technology, including those directed to software, are
abstract and necessarily analyzed at the second step of Alice, nor
do we believe that Alice so directs. Therefore, we find it relevant
to ask whether the claims are directed to an improvement to
computer functionality versus being directed to an abstract idea,
even at the first step of the Alice analysis.
Enfzsh, 822 F.3d at 1335.
Appellants contend the claims are directed to a solution to a
problem in the software arts and argue:
As explained in the background of the application (paras. [0003]
to [0005]), there were known solutions for representing
healthcare variable information and known solutions for
representing clinical data information. However, there was no
known software solution for representing information from both
data sets together in a usable way due to the lack of commonality
in the data structures, even though there would be benefits to
being able to analyze the data in relation.
Appeal Brief 15-16.
We do not find Appellants' argument persuasive. As the Federal
Circuit has explained, a "'claim for a new abstract idea is still an abstract
idea."' SAP Am., Inc. v. Investpic, LLC, No. 2017-2081, 2018 WL 2207254,
at *1 (Fed. Cir. May 15, 2018) (quoting Synopsis, Inc. v. Mentor Graphics
Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016)). The claims fit into the
familiar class of claims that do not "focus ... on ... an improvement in
computers as tools, but on certain independently abstract ideas that use
computers as tools." Electric Power, 830 F.3d at 1354. (See also Ans. 4--5:
"[I]mproving the user experience of a physician interacting with a computer
is not improving the functioning of the computing itself.").
6
Appeal2017-002217
Application 13/200,462
Appellants further argue:
In particular, in the present case, as in DDR Holdings, the claims
do not recite a fundamental economic or longstanding
commercial practice. While the claims involve a computer, these
claims stand apart, because they do not merely recite some
business practice known from the pre-Internet or pre-computer
world along with the requirement to perform it on the Internet or
a computer. Rather, the claimed solution is necessarily rooted in
computer technology to overcome a problem specifically arising
with healthcare data processing systems: getting usable
information out of the volumes of healthcare variable
information and clinical data and to extract information from
those data sets and transform that information into an
understandable structure for further use and analysis. Like the
claimed invention in DDR Holdings the present claims should be
found patent subject matter eligible.
Appeal Brief 16-1 7.
We find Appellants' claims are distinguished from those claims that
our reviewing court has found to be patent eligible by virtue of reciting
technological improvements to a computer system. See, e.g., DDR
Holdings, 773 F.3d at 1249, 1257 (holding that claims reciting computer
processor for serving "composite web page" were patent eligible because
"the claimed solution is necessarily rooted in computer technology in order
to overcome a problem specifically arising in the realm of computer
networks"). Unlike DDR, Appellants do not claim to change how the
underlying technology operates. Claim 1 merely recites a computer
implemented method that analyzes healthcare information on a general non-
descriptive computer system.
Further, our reviewing court has repeatedly held that information
collection and analysis, including when limited to particular content, is
within the realm of abstract ideas. See, e.g., Elec. Power Grp., 830 F.3d at
7
Appeal2017-002217
Application 13/200,462
1353 (holding that "collecting information, analyzing it, and displaying
certain results of the collection and analysis" are "a familiar class of claims
'directed to' a patent-ineligible concept") and Fair Warning IP, LLC v.
Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir. 2016) (claims directed to
collecting information and analyzing it according to certain rules were
directed to an abstract idea).
We agree with the Examiner's finding that at step one of the Alice
analysis, the claims are directed to one or more abstract ideas. We now tum
to the second step of the Alice analysis, in which we must determine whether
the additional elements of the claims transform them into patent-eligible
subject matter.
Step Two: Whether Additional Elements Transform the Idea into
Patent-Eligible Subject Matter
The Examiner finds:
[T]he claims do not include additional elements that are
sufficient to amount to significantly more than the judicial
exception because the additional elements or combination of
elements in the claims, other than the abstract idea per se, amount
to no more than a recitation of (A) a generic computer
structure(s) that serves to perform generic computer functions
that serve to merely link the abstract idea to a particular
technological environment (e.g., a computer system, a data
storage device, a server, etc.); and (B) functions that are well-
understood, routine, and conventional activities previously
known to the pertinent industry (e.g., receiving healthcare data,
analyzing healthcare data, comparing healthcare data, etc.). For
example, paragraph [0060] of applicant's specification recites
that system/method is implemented using a general purpose CPU
or microprocessor which is a generic type computer.
Final Action 2-3.
8
Appeal2017-002217
Application 13/200,462
Appellants contend independent claims 1, 10 and 22 satisfy the
second step of the patent matter eligibility test under Alice by adding
significantly more than an abstract idea because:
The methods in independent claims 1 and 22, and computer
system in independent claim 10 add meaningful limitations that
do not preempt other uses of the alleged abstract idea, such as the
iterative process where variables are assigned and unassigned, as
the clusters are transformed into structures suitable for
combining with the clinical data. Such data transformation steps,
in combination with the other elements as a whole, improve the
technology of analyzing healthcare information by providing a
way to analyze healthcare variables and clinical data as recited
in the claims.
Appeal Brief 18.
We agree the Supreme Court has described "the concern that drives
this exclusionary principle [i.e., the exclusion of abstract ideas from patent
eligible subject matter] as one of pre-emption." Alice, 134 S. Ct. at 2354.
But characterizing pre-emption as a driving concern for patent eligibility is
not the same as characterizing preemption as the sole test for patent
eligibility. As our reviewing court has explained, "[t]he Supreme Court has
made clear that the principle of preemption is the basis for the judicial
exceptions to patentability" and "[ fJor this reason, questions on preemption
are inherent in and resolved by the § 101 analysis." Ariosa Diagnostics, Inc.
v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (citing Alice, 134 S.
Ct. at 2354). And although "preemption may signal patent ineligible subject
matter, the absence of complete preemption does not demonstrate patent
eligibility." Id. Moreover, "[ w ]here a patent's claims are deemed only to
disclose patent ineligible subject matter under the [Alice/Mayo] framework .
. . , preemption concerns are fully addressed and made moot." Id.; see also
OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362-63 (Fed. Cir.
9
Appeal2017-002217
Application 13/200,462
2015), cert. denied, 136 S. Ct. 701 (2015) ("[T]hat the claims do not
preempt all price optimization or may be limited to price optimization in the
ecommerce setting do not make them any less abstract.").
Appellants contend, the claimed "improvement to computer-
implemented methods and systems for analyzing healthcare information is
akin and analogous to the patent eligible subject matter of Research
Corporation Technologies Inc. v. Microsoft Corp., 627 F.3d 859 (Fed. Cir.
2010) which involved additional steps that tie an abstract idea (a
mathematical operation involving a blue noise mask) to the processor's
ability to process digital images." Appeal Brief 18.
Appellants further contend that "Consistent with the Enfzsh case
discussed hereinbefore, and the Research Corp. Tech. case, the claims in the
application under appeal are patentable subject matter eligible, and the
rejections should be overturned" and:
Moreover, the recitations of the various modules in claim
10 are not generic computer elements. The modules recited in
detail are tailored to the types of computing systems that analyze
healthcare data of the present disclosure and specially configured
as noted above. For example, these modules may be specially
tailored hardware circuits, as affected by program code or as may
be implemented in application-specific hardware, for the claimed
technical solution and transformation of data. See para. [0044] to
[0046] and [0072].
Appeal Brief 20.
We find no parallel here between Appellants' claims and the claims in
Enfish or Research Corp. Techs, nor any comparable aspect in Appellants'
claims that represents "an improvement to computer functionality." The
alleged advantages that Appellants tout do not concern an improvement to
computer capabilities but instead relate to an alleged improvement in
10
Appeal2017-002217
Application 13/200,462
analyzing healthcare information by providing a way to analyze healthcare
variables and clinical data wherein a computer is used as a tool in its
ordinary capacity to analyze the data. Subsequently, we sustain the
Examiner's 35 U.S.C. § 101 rejection of claims 11, 3-4, 6, 8-10, 12-13, 15,
17-18 and 22 not argued separately. See Appeal Brief 21.
DECISION
The Examiner's 35 U.S.C. §101 rejection of claims 1, 3-4, 6, 8-10,
12-13, 15, 17-18 and 22 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)(l ). See 37 C.F.R.
§ 1.136(a)(l )(v).
AFFIRMED
11