Ex Parte Hess

Patent Trial and Appeal Board

Mar 26, 2018

11957171 (P.T.A.B. Mar. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111957,171 12/14/2007
99434 7590 03/28/2018
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
FIRST NAMED INVENTOR
JohnM. Hess
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.
19603-0054 8810
EXAMINER
IMMANUEL, ISIDORA I
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
03/28/2018 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):
usptomail@alston.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN M. HESS
Appeal2016-007801
Application 11/957, 171
Technology Center 3600
Before NINA L. MEDLOCK, BRUCE T. WIEDER, and
BRADLEY B. BAY AT, Administrative Patent Judges.
BAY AT, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
John M. Hess ("Appellant")2 appeals under 35 U.S.C. § 134(a) from
the Examiner's final rejection of claims 1-8 and 15-20. We have
jurisdiction under 35 U.S.C. § 6(b ).
1 Our Decision references Appellant's Appeal Brief ("Br.," filed Nov. 4,
2015) and Supplemental Appeal Brief ("Supp. App. Br.," filed Feb. 24,
2016), the Examiner's Answer ("Ans.," mailed June 3, 2016) and the Final
Office Action ("Final Act.," mailed May 29, 2015).
2 Appellant identifies "McKesson Financial Holdings Limited" as the real
party in interest. Appeal Br. 3.
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Application 11/957, 171
We AFFIRM.
SUMMARY OF DECISION
THE INVENTION
Appellant's claimed invention relates to efficiently searching data
files with multi-layer encoding. Spec. i-f 1. Claim 1, reproduced below, is
illustrative of the subject matter on appeal: 3
1. A method for retrieving encoded transaction information
associated with a pharmacy transaction, comprising:
receiving a request for transaction information;
identifying, in an index of data elements associated with
pharmacy transaction messages in a plurality of data files, at
least a first data file including the requested transaction
information and at least one location of the transaction
information within the first data file;
opening the first data file, wherein the first data file
includes a header and a plurality of data blocks of encoded
pharmacy transaction messages;
reading the header; and
determining based at least in part on the at least one
location a first data block in the first data file that contains a
first byte of the requested transaction information;
decoding at least the first data block; and
3 We note that there is a discrepancy as to the language of pending claim 1.
In the amendment filed February 21, 2012, Appellant deleted several
portions of claim 1 including the words "and" and "outputting," and the
"generating" step. In the subsequent (and most recent) amendment filed
May 12, 2015, the deleted portions reappear without markings. For
purposes of this appeal, we take the claim language as set forth in
Appellant's Supplemental Appeal Brief, which reflects the language in the
May 12, 2015 amendment, except that we treat the superfluous re-
introduction of the word "outputting" in claim 1 as a typographical error.
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outputting [sic] retrieving the transaction information
from the decoded first data block based at least in part on the at
least one location; and
generating a report based at least in part on the
transaction information, and presenting the report to a user.
THE REJECTIONS
1. Claims 1-8 are rejected under 35 U.S.C. § 101 as directed to
judicially-excepted subject matter.
2. Claims 1-8 and 15-20 are rejected under 35 U.S.C. § 112, second
paragraph, as indefinite.
3. Claims 15-20 are rejected under 35 U.S.C. § 102(b) as anticipated by
Ginter et al. (US 5,892,900, issued Apr. 6, 1999) ("Ginter").
4. Claims 1-8 and 15-20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Mayaud (US 5,845,255, issued Dec. 1, 1998), Ginter, and
Midgdey et al. (US 5,485,606, issued Jan. 16, 1996) ("Midgdey").
ANALYSIS
Ground of Rejection under 35 USC§ 101
Claims 1---8
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
"new and useful process, machine, manufacture, or composition of matter."
35 U.S.C. § 101. The Supreme Court, however, has long interpreted§ 101
to include an implicit exception: "[l]aws of nature, natural phenomena, and
abstract ideas" are not patentable. See, e.g., Alice Corp. Pty. Ltd. v. CLS
Banklnt'l, 134 S. Ct. 2347, 2354 (2014) (internal quotation marks and
citation omitted).
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The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Incorporated, 566 U.S. 66, 82-84 (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. The first step in that analysis is to "determine whether
the claims at issue are directed to one of those patent-ineligible concepts."
Id. If the claims are not directed to a patent-ineligible concept, e.g., to an
abstract idea, the inquiry ends. Otherwise, the inquiry proceeds to the
second step where the elements of the claims are considered "individually
and 'as an ordered combination'" to determine whether there are additional
elements that "'transform the nature of the claim' into a patent-eligible
application." Id. (quoting Mayo, 566 U.S. 66, 79, 78).
Applying the framework in Alice, and as the first step of that analysis,
the Examiner determines that claim 1 "is directed to an abstract idea of an
algorithm and can be performed manually." Final Act. 5. The Examiner
maintains that:
the method is directed to standard pharmacy transactions where
a pharmacist or technician receives a request to fill a
prescription, the patient is identified and the specific profile
information of that patient is accessed, opened and read,
whether the specific information is in regards to a prior
dispensing pharmacist, medical code for treatment received or
sought or a patient's drug abuse, and based on the sensitivity of
the patient's information and where it would be stored based on
the sensitivity of the patient's file, accessing that information
would require further authorization, the information is then
retrieved and the patient receives a receipt of the transaction
and information detailing their prescription.
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Ans. 9. According to the Examiner, "Applicant seeks to automate an
algorithm directed to accessing patient information." Id. Proceeding to the
second step of the Alice framework, the Examiner finds that:
the limitations "identifying", "reading", "determining",
"decoding" and "retrieving" are each mental steps and
"opening" while requiring a computer is still from the
perspective of a person, do not provide meaningful limitation(s)
to transform the abstract idea into a patent eligible application
of the abstract idea such that the claim( s) amounts to
significantly more than the abstract idea itself.
Final Act. 5. The Examiner also finds that claim 1 "is silent in the recitation
of a computer performing the steps and can be directed to a person
performing the steps" (Ans. 8-9) and that "[t]he steps can be performed with
use of a wireless device or a generic computer, a computer is already
capable of receiving a command, showing the location of information,
opening a file, searching for a specific piece of information, translating
information, outputting what it derives and displaying results." Id. at 9-10.
The Examiner has applied this analysis to all the claims in the rejection.
As an initial matter, we note that Appellant argues claims 1-8 as a
group, and argues claim 1 as exemplary. See Br. 10-20. We select
independent claim 1 as the representative claim for this group and, thus, the
remaining claims 2-8 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
Addressing these arguments, in tum, we do not find any to be persuasive of
error in the rejection thereof.
Turning to the first step of Alice, Appellant argues that the Examiner
erred in rejecting claim 1 under 35 U.S.C. § 101 because "the Examiner has
failed to provide any proof that pharmacy benefit adjudication is an abstract
concept." Br. 11. According to Appellant, "the Examiner only provides an
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opinion as to what is an abstract concept." Id. Appellant cites Ex parte
Renald Poisson, Appeal 2012-011084 (PTAB Feb. 27, 2015) in support of
the contention that the Examiner was required to provide factual support for
the conclusion that the claim is directed to an abstract idea (Br. 11, 16-17).
Appellant also argues that the Examiner has put forth no evidence that the
claims are directed to "a building block of economic activity or any other
form of building block of human activity." Id. at 12. According to
Appellant, abstract ideas are "limited to mathematical algorithms,
fundamental economic practices, or longstanding commercial practices" (id.
at 12-13) and "the Examiner has provided no authority for the expansion of
categories for abstract ideas to encompass" an algorithm that can be
performed mentally.
A plain reading of the rejection and response to arguments in the
Answer shows the Examiner reviewed the claim as a whole with all its
limitations. See Final Act. 5; see also Ans. 8-10. Appellant does not cite
any authority as to what kind "proof' the Examiner is required to provide in
making a determination as to the abstract idea under 35 U.S.C. § 101. See,
MPEP § 2106.07(a) III (2018). Moreover, we note that Poisson is not a
precedential decision and, therefore, we are not bound by it. Nevertheless,
we have reviewed Poisson and do not consider it to be pertinent to the issue
in this appeal. In Poisson, the Patent Trial and Appeal Board ("Board")
rejected the Examiner's conclusion that the claims were directed to an
abstract idea of a new set of rules for playing a card game. Poisson, Appeal
2012-011084, slip op. at 5. Instead, the Board found that the claim involved
playing a game of football "using a table and cards." Id. The Board
reversed the Examiner's rejection because the Examiner did not provide
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adequate findings of fact "on which to base the Alice analysis." Id. Thus,
the Board concluded that the facts and evidence relied upon by the Examiner
did not support a finding that the claim was an ineligible abstract idea. Id.
Here, the Examiner made adequate findings of fact, as discussed above, that
the claimed method is directed to an abstract idea.
Appellant's argument is unpersuasive at least because abstract ideas
are not limited to building blocks of economic activity or building blocks of
human activity. "The 'abstract idea' step of the inquiry calls upon us to 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 Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257-58 (Fed.
Cir. 2016 (quoting Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350,
1353 (Fed. Cir. 2016)); see also Enfzsh, LLC v. Microsoft Corp., 822 F.3d
1327, 1335 (Fed. Cir. 2016). There is no definitive rule to determine what
constitutes an "abstract idea." Rather, the Federal Circuit has explained that
"both [it] and the Supreme Court have found it sufficient to compare claims
at issue to those claims already found to be directed to an abstract idea in
previous cases." Enfzsh, 822 F.3d at 1334; see also Amdocs (Israel) Ltd. v.
Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) (explaining that,
in determining whether claims are patent eligible under § 101, "the
decisional mechanism courts now apply is to examine earlier cases in which
a similar or parallel descriptive nature can be seen-what prior cases were
about, and which way they were decided").
Importantly, it is the invention as claimed that is analyzed at step one.
See Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat.
Ass 'n, 776 F.3d 1343, 1346 (Fed. Cir. 2014) ("We focus here on whether the
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claims of the asserted patents fall within the excluded category of abstract
ideas.") (Emphasis added); see also In re Hiniker Co., 150 F.3d 1362, 1369
(Fed. Cir. 1998) ("[T]he name of the game is the claim."); In re
Warmerdam, 33 F.3d 1354, 1360 (Fed. Cir. 1994) ("The problem with
Warmerdam's argument is that the claims here do not have that [argued-
over] effect. It is the claims which define the metes and bounds of the
invention entitled to the protection of the patent system.")
Here, we agree with the Examiner that the claims are focused on a
combination of abstract-idea processes. See supra. Claim 1 recites a
process of using an index to search for and retrieve a pharmacy transaction
and then presenting a report to a user, without any inventive technology for
performing those functions. Cf Intellectual Ventures I LLC v. Erie
Indemnity Company, 850 F.3d 1315, 1328 (Fed. Cir. 2017) ("the heart of the
claimed invention lies in creating and using an index to search for and
retrieve data ... an abstract concept."). No specific type of encoding or
decoding is required by claim 1. See RecogniCorp, LLC v. Nintendo Co.,
855 F.3d 1322, 1326 (Fed. Cir. 2017) ("abstract idea of encoding and
decoding image data"); see also Intellectual Ventures I LLC v. Capital One
Fin. Corp., 850 F.3d 1332, 1340-41 (Fed. Cir. 2017) (organizing,
displaying, and manipulating data encoded for human- and machine-
readability is directed to an abstract concept).
In maintaining the rejection under § 101, the Examiner points out that
"the claim is silent in the recitation of a computer performing the steps and
can be directed to a person performing the steps." Ans. 8-9. The Federal
Circuit has held that if a method can be performed by human thought alone,
or by a human using pen and paper, it is merely an abstract idea and is not
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patent-eligible under § 101. See CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1372-73 (Fed. Cir. 2011) ("[A] method that can be
performed by human thought alone is merely an abstract idea and is not
patent-eligible under§ 101."). Additionally, mental processes, e.g., reading
information and determining information as recited in claim 1, remain
unpatentable even when automated to reduce the burden on the user of what
once could have been done with pen and paper. See id. at 1375 ("That
purely mental processes can be unpatentable, even when performed by a
computer, was precisely the holding of the Supreme Court in Gottschalk v.
Benson, [ 409 U.S. 63 (1972)].").
Appellant argues that "the claims are not directed to an abstract idea
that can be implemented solely in the human mind or using only pen and
paper" because the claims "provide a computer-based solution that must
necessarily be implemented in a network context and that necessarily
requires evaluation of data exchanged over a network." Br. 14--15.
Appellant's argument is not persuasive of error in the rejection
because Appellant has not directed us to any particular limitation recited in
the claims that cannot be performed in the human mind or using only pen
and paper. Appellant's argument that claim 1 provides "a computer-based
solution" is not commensurate with the scope of claim 1, which, on its face,
does not require a computer. 4 Nor does claim 1 recite "a network" or "data
exchanged over a network." Contrary to Appellant's arguments, Appellant's
4 "[R ]elying on a computer to perform routine tasks more quickly or more
accurately is insufficient to render a claim patent eligible." OIP Techs., Inc.
v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015), cert. denied, 136
S. Ct. 701 (2015) (citing Alice, 134 S. Ct. at 2359)
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Specification expressly states that the invention is not necessarily
implemented in a network environment. See Spec. i-f 41 ("the invention may
be implemented in a non-network environment, in which a standalone
application server 140 executes the SLFile application 144 on a locally
stored file system data.") (Emphasis added).
Nor do we agree with Appellant's contention that "no corresponding
pre-existing manual analog solution exists." Br. 13. Anyone who has ever
used a library is familiar with the concept of using an index (e.g., a card
catalog) to identify the location of information (e.g., a book), and reading a
header (e.g., a table of contents in the front of the book) to determine a more
specific location of the information (e.g., page numbers in the book).
Appellant further argues "that the claimed elements are not merely
directed to an abstract concept of an algorithm" because the claims are
similar to the inventions held eligible in DDR Holdings 5 and Trading
Technologies6• Br. 13-16. According to Appellant, "the solution provided
by the present claims can only be implemented within a networked
environment such as the Internet and no corresponding pre-existing manual
analog solution exists." Id. Appellant concludes that "as in DDR Holdings,
the solution provided by the present claims is not an abstract idea." Id.
In DDR Holdings, the Federal Circuit held that the invention was
eligible under step two of the Mayo/Alice framework, which is only reached
when a claimed invention fails under step one. See DDR Holdings, 773 F.3d
at 1257 ("under any of these characterizations of the abstract idea, the [']399
5 DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014).
6 Trading Techs. Int'!, Inc. v. CQG, Inc., No. 05-CV-4811, 2015 WL 774655
(N.D. Ill. Feb. 24, 2015), aff'd, 675 F. App'x 1001 (Fed. Cir. 2017)
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patent's claims satisfy Mayo/Alice step two."). Thus, Appellant's arguments
are not persuasive of error in the Examiner's determination that the claims
are directed to an abstract idea under Mayo/Alice step one.
Moreover, Appellant's arguments are not commensurate with the
scope of the claims, which do not recite "a networked environment," the
Internet, or any other network. Unlike the situation in DDR Holdings,
Appellant does not identify any problem particular to computer networks
and/or the Internet that claim 1 allegedly overcomes. The possibility that a
data file may be transmitted or received via some unspecified network, in
some embodiments covered by claim 1, is not sufficient to make the claimed
invention as a whole rooted in computer technology. Cf Intellectual
Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1371 (Fed. Cir.
2015) ("The patent claims here do not address problems unique to the
Internet, so DDR has no applicability."). Appellant's argument that the
claims are similar to Trading Technologies is unpersuasive of Examiner
error for the same reason, namely that claim 1 does not recite "network-
based healthcare claim requests received from or transmitted to a healthcare
provider computer and claims processor computer." Br. 14.
We note the Appellant's arguments regarding preemption. See, e.g.,
id. at 12 ("the present claims include additional features that do not preempt
every application of any alleged abstract idea."); id. at 15 ("there is no
attempt to preempt the concept of an algorithm such that others cannot
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practice it."). But preemption is not a separate test under§ 101.7 There is
no dispute that 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 Corp., 134 S. Ct. at
2354. But characterizing pre-emption as a driving concern for patent
eligibility is not the same as characterizing pre-emption as the sole test for
patent eligibility. "The Supreme Court has made clear that the principle of
preemption is the basis for the judicial exceptions to patentability" and "[ f]or
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 Corp., 134 S. Ct. at2354). Yet, although
"preemption may signal patent ineligible subject matter, the absence of
complete preemption does not demonstrate patent eligibility." Id.; see also
OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362-63 (Fed. Cir.
7
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, [566 U.S.
at 72-73]. Thus, broad claims do not necessarily raise§ 101
preemption concerns, and seemingly narrower claims are not
necessarily exempt.
CLS Bank Int'!. v. Alice Corp. Pty. Ltd., 717 F.3d 1269, 1281 (Fed. Cir.
2013) (Lourie, J., concurring).
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2015) ("[T]hat the claims do not preempt all price optimization or may be
limited to price optimization in the e-commerce setting do not make them
any less abstract."). Thus, Appellant's argument fails to apprise us of error
as to the Examiner's determination under step one of Alice.
Turning to the second step of Alice, Appellant argues that the
Examiner failed to set forth a prima facie case for ineligibility because "the
Examiner makes a blanket opinion covering all claims; failing to discuss
each element, or even each claim, and failing to provide factual evidence
and/or documentary support as to why it is not significantly more than the
alleged abstract idea." Br. 16.
As to the question of establishing a prima facie case, the Federal
Circuit has made clear that "the prima facie case is merely a procedural
device that enables an appropriate shift of the burden of production." Hyatt
v. Dudas, 492 F.3d. 1365, 1369 (Fed. Cir. 2007) (citing In re Oetiker,
977 F.2d 1443, 1445 (Fed. Cir. 1992)). 35 U.S.C. § 132 sets forth a general
notice requirement whereby the applicant is notified of the reasons for a
rejection together with such information as may be useful in judging the
propriety of continuing with prosecution of the application. See, e.g., In re
Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011). In this case, the Examiner
provided adequate explanation to meet the notice requirement. The
Examiner set forth the statutory basis of the rejection, applied Alice's two-
part framework, and sufficiently articulated reasoning in an informative
manner, thus, meeting the notice requirement of 35 U.S.C. § 132. See
Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990) (Section 132 "is
violated when a rejection is so uninformative that it prevents the applicant
from recognizing and seeking to counter the grounds for rejection."). We
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note that Appellant has put forward no rebuttal evidence showing that any
particular limitation of claim 1 amounts to "significantly more" than the
abstract idea. Nor has Appellant identified any particular issue of disputed
fact. Appellant has not, in fact, pointed to anything in the Specification,
including the claims, in support of Appellant's arguments and, thus, does not
bring any questions of fact to our attention.
Appellant further argues that the claims recite substantially more and
are not generic computer functions. See Br. 17-19. Appellant reproduces
the language of claim 1 at page 1 7 of the Appeal Brief. But repeating the
claim language fails to advance Appellant's position by apprising us of
Examiner error. Appellant does not provide any technical reasoning that any
particular limitation, or combination of limitations, transforms the abstract
idea into a patent-eligible invention.
Appellant next reproduces the "identifying," "opening," and
"determining" steps and argues that these "are meaningful limitations
beyond generally linking the alleged basic concept of an algorithm." Br. 18
(citing Example 3 of the January 2015 USPTO Examples: Abstract Ideas).
Example 3 is based on the Federal Circuit's decision in Research
Corporation Technologies, Inc. v. Microsoft Corporation, 627 F.3d 859
(Fed. Cir. 2010). There, the court observed that the claimed methods (i.e.,
claims 1 and 2 of US 5,111,310 and claim 11 of US 5,341,228) "address 'a
need in the art for ... halftone rendering of gray scale images in which a
digital data processor is utilized in a simple and precise manner to
accomplish the halftone rendering."' Id. at 868---69 (citations omitted).
Even though the claimed combination incorporated, in significant part,
algorithms and formulas that control the masks and half-toning, the court
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found that "[t]he invention presents functional and palpable applications in
the field of computer technology." Id. at 869.
Here, in contrast, no analogous improvement in the field of computer
technology is recited. Rather, the claimed steps of "identifying," "opening,"
and "determining" amount to basic functions commonly performed by
generic computers. Identifying a file using an index, opening a file, and
determining a location within a file amount to performing a "mathematical
operation." Cf Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Canada
(US.), 687 F.3d 1266, 1278 (Fed. Cir. 2012) (citing Gottschalk, 409 U.S. at
67) (a computer used "for its most basic function, the performance of
repetitive calculations"). For example, the "determining" step is described
in the Specification as "simply dividing the byte location in the unencoded
data file 130 by the configured data segment size, which is fixed and stored
in header 152, and then rounding up to the next whole integer." Spec. i-f 39.
Indexing and opening files are also routine and/ or generic computer
functions. Cf Intellectual Ventures, 850 F.3d at 1329 ("while the claims
necessarily cabin the idea of categorical data search and retrieval to a
computer environment, the claimed computer functionality can only be
described as generic or conventional."). Thus, in contrast to Research
Corporation Technologies, the instant claims describe purely conventional
computing functions.
Appellant next argues that "the pending claims are improving the
technological process of retrieving encoded transaction information
associated with a pharmacy transaction as part of the processing of an
electronic healthcare transaction, such as a healthcare claim request,
communicated over a network, such as the Internet" and "are patent-eligible
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not because they were implemented on a computer, but because they
improve an existing technological process for electronic healthcare
transaction processing." Br. 19.
We have already addressed Appellant's argument that the claims
improve technology because they are limited to a network such as the
Internet. There is no such requirement in the claims. Aside from
Appellant's network-based arguments, Appellant does not identify any other
specific technological process that is improved by the claims.
Accordingly, we are not persuaded for the reasons set forth above that
the Examiner erred in rejecting independent claim 1 under 35 U.S.C. § 101.
Therefore, we sustain the Examiner's rejection of claim 1. We also sustain
the Examiner's rejection of dependent claims 2-8 which fall with claim 1.
New Ground of Rejection under 35 US.C. § 101
Claims 15-20
We note that a claim directed to a "system," despite its format, should
be treated no differently from the comparable process claims held to be
patent ineligible under§ 101. Cf Alice, 134 S. Ct. at 2351 ("the system
claims are no different in substance from the method claims"). Indeed, the
Supreme Court cautioned that the form of the claims should not trump basic
issues ofpatentability. See Parker v. Flook, 437 U.S. 584, 593 (1978)
(advising against a rigid reading of § 101 that "would make the
determination of patentable subject matter depend simply on the draftsman's
art and would ill serve the principles underlying the prohibition against
patents for 'ideas' or phenomena of nature."). Independent claim 15 is
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substantially similar to independent claim 1, and fails to satisfy the Alice
framework for the same reasons.
It appears from the Specification that there may be a disclosed
performance improvement from decoding less than the entire first data file.
See Spec. i-f 35 ("only the data block(s) 154 containing the specified claim
transaction message 120 is decoded (e.g., decrypted and decompressed)
rather than decoding the entire encoded data file 150, thereby limiting the
number of CPU cycles required to retrieve the requested transaction
information.") (Emphasis added). However, this performance improvement
is not captured in claim 15, which is not limited to decoding less than the
entire file. Claim 15 recites "decode at least the first data block and output
the transaction information" which encompasses decoding the entire first
data file. Supp. App. Br. 4 (Claims Appendix) (emphasis added); see
Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1322 (Fed.
Cir. 2016) ("The district court erred in relying on technological details set
forth in the patent's specification and not set forth in the claims to find an
inventive concept."); Berkheimer v. HP Inc., 881F.3d1360, 1369 (Fed. Cir.
2018) ("[Claim 1] does not recite any of the purportedly unconventional
activities disclosed in the specification.").
Therefore, we reject claim 15 under 35 U.S.C. § 101. Claims 16-20
depend from claim 15 and add nothing more than data gathering steps or
merely reciting generic computer instructions performing conventional
functions that courts have routinely found insignificant to transform abstract
ideas to those into patent-eligible inventions. As such, we reject claims 15-
20 under 35 U.S.C. § 101.
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Indefiniteness
Claims 1-7 and 15-20
The Examiner found that claims 1 and 15 are indefinite "because the
limitation 'receiving a request ... ' rests on a priori understanding for the
existence of a file containing transaction information." Final Act. 3, 6.
According to the Examiner, "[t]he method and system are directed to
retrieving information from a file, there is an essential missing
step/ element." Id. at 3.
A claim which omits matter disclosed to be essential to the invention
as described in the Specification or in other statements of record may be
subject to rejection under 35 U.S.C. § 112(b) or pre-AIA 35 U.S.C. § 112,
paragraph 2. See In re Mayhew, 527 F.2d 1229 (CCPA 1976); In re
Venezia, 530 F.2d 956 (CCPA 1976); In re Collier, 397 F.2d 1003 (CCPA
1968). But the Examiner does not point to any disclosure in the
Specification or statements of record by Appellant that identify creation of a
file containing transaction information as being essential to the invention.
We are persuaded that those skilled in the art would understand what is
claimed given the ordinary meaning of the claim language when read in light
of the Specification. See Orthokinetics, Inc. v. Safety Travel Chairs, Inc.,
806 F.2d 1565, 1576 (Fed. Cir. 1986) (The test for definiteness under
35 U.S.C. § 112, second paragraph, is "whether those skilled in the art
would understand what is claimed when the claim is read in light of the
specification."). In other words, as disclosed in the "Background of the
Invention" section of the Specification, the creation of files containing
electronic pharmacy transaction messages is known in the industry. See,
e.g., Spec. i-f 3 ("These messages are typically collected into files and
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archived by the claims switch for a variety of reasons, such as audits,
customer troubleshooting, data mining and reporting.") Thus, the absence of
a file creation step in the claims is merely an issue of breadth and not
indefiniteness. See In re Gardner, 427 F.2d 786 (CCPA 1970).
Accordingly, we do not sustain the rejection of claims 1 and 15 as
indefinite. Dependent claims 2-7 and 16-20 were rejected only because of
their dependence on claims 1 and 15. Final Act. 6. Accordingly, we also do
not sustain the rejection of claims 2-7 and 16-20 as indefinite.
Claim 8
The Examiner rejected claim 8 because it lacks antecedent basis for
the limitation "the first data file unencoded." Final Act. 6. Appellant does
not argue this rejection of claim 8. See Br. 21-22. Claim 8 depends from
claim 1, which does not contain any mention of an unencoded data file.
Accordingly, we sustain the rejection of claim 8 as indefinite.
Anticipation
In rejected claim 15, the Examiner finds that Ginter discloses a
processor in communication with a memory as claimed, and determines that
"[t]he remaining limitations are intended use, as the function is associated
with what the computer is implemented to perform and therefore does not
have patentable weight." Final Act. 7 (citing MPEP § 2103(I)(C).
Appellant disputes the Examiner's position. Br. 22-23.
In the Answer, the Examiner does not reproduce the rejection under
35 U.S.C. § 102(b) or respond to Appellant's argument. It appears that the
Examiner intended to withdraw this rejection. However, the Examiner has
not expressly indicated that the rejection under 35 U.S.C. § 102(b) is
withdrawn. See MPEP § 1207 ("An examiner's answer is deemed to
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incorporate all of the grounds of rejection set forth in the Office action from
which the appeal is taken (as modified by any advisory action and pre-
appeal brief conference decision), unless the examiner's answer expressly
indicates that a ground of rejection has been withdrawn.").
Regardless, the Examiner's rejection is in error. A patent applicant is
free to recite features of an apparatus either structurally or functionally. See
In re Swinehart, 439 F.2d 210, 212 (CCPA 1971) ("[T]here is nothing
intrinsically wrong with [defining something by what it does rather than
what it is] in drafting patent claims."); see also MPEP § 2103(I)(C) ("when
evaluating the scope of a claim, every limitation in the claim must be
considered"). Here, the Examiner summarily concludes that the system of
Ginter is capable of performing the recited functions. Final Act. 7. There is
no analysis. Accordingly, we do not sustain the rejection of independent
claim 15, and its dependent claims 16-20, as being anticipated by Ginter.
Obviousness
Appellant argues independent claims 1 and 15 together, and does not
separately argue the rejection of dependent claims 2-8 and 16-20. See Br.
23-28. We select independent claim 1 as the representative claim for this
group, and the remaining claims 2-8 and 15-20 stand or fall with claim 1.
37 C.F.R. § 41.37(c)(l)(iv).
The Examiner's position is that Mayaud discloses the "receiving,"
"identifying," and "generating" limitations of claim 1. Final Act. 7, 10. The
Examiner finds that Ginter discloses the "opening," "reading,"
"determining," "decoding," and "retrieving" limitations of claim 1, except
that the determining and retrieving steps are "based at least in part on the at
least one location" Id. at 8. The Examiner finds that Midgdey remedies this
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deficiency in Ginter (id.) and determines that "it would have been obvious to
one of ordinary skill in the art at the time of the invention to combine
Mayaud, Ginter and Midgdey in order to efficiently manage a large number
of files." Id. The Examiner applies this same analysis to independent claim
15. Id. at 7.
Appellant argues that "neither Mayaud nor Ginter teach[ es] or
suggest[ s ]"the claim 1 limitations of "identifying," "determining," and
"retrieving." Br. 26.
Appellant's argument is unpersuasive because Appellant is attacking
Mayaud and Ginter individually; the rejection is based on the combined
teachings of Mayaud, Ginter and Midgdey, not on any one of them alone.
See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986)
(Nonobviousness cannot be established by attacking the references
individually when the rejection is based on the teachings of a combination of
references).
Appellant further argues that Midgdey does not disclose "based at
least in part on the at least one location" as required by claim 1. According
to Appellant, "[ t ]he locations in Midgdey are the starting points for the
directory blocks and data blocks that are being restored" and "are not
locations within a data file where transaction data is stored." Br. 27.
Appellant's argument is not persuasive at least because it does not
address the Examiner's rejection. The Examiner finds that Mayaud, not
Midgdey, discloses data files that contain transaction data. Final Act. 7.
Moreover, we are not persuaded of Examiner error because Appellant
does not adequately explain why the location of data blocks in Midgdey
does not teach or suggest the claimed location of a first data block. Midgdey
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discloses a system for archiving and restoring data files. As shown in
Figure 1 of Midgdey, each data file 30a is stored in a sequential series of
data blocks 30. The mapping of blocks 30 to data files is provided by block
allocation table 24, which "includes an array of memory locations, each of
which corresponds to one block 12 of the tape." Midgdey, col. 4, 11. 34--36.
Midgdey discloses that "a data block chain is established in the block
allocation table corresponding to the data blocks 30 in which the data
files 30a are written for a given backup set" and "starting locations for ...
the data block chain are addressed by pointers from the backup set directory
file 26a for the corresponding backup set." Id. at col. 4, 11. 41--46.
Appellant has not offered any persuasive argument or technical
reasoning to explain why a pointer to a location of a first data block 30 of a
requested file 30a to be restored does not meet the claimed "location [of] a
first data block in the first data file that contains a first byte of the requested
... information." For example, Appellant has not explained how claim 1
excludes the requested information being stored at the start of a file, i.e., in
the first data block of that file.
As such, we are not persuaded, on the present record, of error on the
part of the Examiner. Accordingly, we sustain the rejection of independent
claim 1, and claims 2-8 and 15-20 which fall with claim 1. 3 7 C.F .R.
§ 41.37(c)(l)(iv).
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DECISION
The rejection of claims 1-8 under 35 U.S.C. § 101 is affirmed.
We enter a NEW GROUND OF REJECTION of claims 15-20 under
35 U.S.C. § 101.
The rejection of claims 1-7 and 15-20 under 35 U.S.C. § 112, second
paragraph, is reversed.
The rejection of claim 8 under 35 U.S.C. § 112, second paragraph, is
affirmed.
The rejection of claims 15-20 under 35 U.S.C. § 102(b) as anticipated
by Ginter is reversed.
The rejection of claims 1-8 and 15-20 under 35 U.S.C. § 103(a) as
unpatentable over Mayaud, Ginter, and Midgdey is affirmed.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b) (2010). 37 C.F.R. § 41.50(b) provides that "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review."
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE 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 prosecution 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 ....
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Should Appellant elect to prosecute further before the Examiner
pursuant to 3 7 C.F .R. § 41. 50(b )( 1 ), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance will be deferred until conclusion of the
prosecution before the Examiner unless the affirmed rejection is overcome.
If Appellant elects prosecution before the Examiner and this does not
result in allowance of the application, abandonment, or a second appeal, this
case should be returned to the Patent Trial and Appeal Board for final action
on the affirmed rejection, including any timely request for rehearing thereof.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
37 C.F.R. § 41.50(b)
24