Ex Parte Hoover et al

Patent Trial and Appeal Board

Aug 29, 2018

14662560 (P.T.A.B. Aug. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/662,560 03/19/2015
145793 7590 09/06/2018
SIMPSON & SIMPSON, PLLC
5555 MAIN STREET
WILLIAMSVILLE, NY 14221-5406
FIRST NAMED INVENTOR
Linn C. Hoover
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.
20131854US01 /
XERP175US
CONFIRMATION NO.
9665
EXAMINER
BURLESON, MICHAEL L
ART UNIT PAPER NUMBER
2675
NOTIFICATION DATE DELIVERY MODE
09/06/2018 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):
patentEFS@idealawyers.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LINN C. HOOVER and WILLIAM J. HANNAWAY
Appeal2018-001604
Application 14/662,560
Technology Center 2600
Before ERIC S. FRAHM, JOHNNY A. KUMAR, and JASON M. REPKO,
Administrative Patent Judges.
FRAHM, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-20, which are all the claims pending and
rejected in the application. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Throughout this Decision we refer to the Final Office Action mailed
December 1, 2016 ("Final Act."); the Appeal Brief filed May 24, 2017
("App. Br."); the Examiner's Answer mailed October 4, 2017 ("Ans."); and
the Reply Brief filed November 30, 2017 ("Reply Br.").
2 Appellants identify Conduent Business Systems, LLC as the real party in
interest. App. Br. 3.
Appeal2018-001604
Application 14/662,560
STATEMENT OF THE CASE
Introduction
Appellants' invention relates to creating a custom medication label
comprising a portion cut to represent a silhouette of a patient. Spec. ,r 1,
Abstract. Claim 1, reproduced below with paragraphing and emphasis
added, is illustrative of the invention.
1. A computer-based apparatus for creating custom medication
labels, comprising:
a memory element configured to store:
medication information;
patient information; and,
a plurality of medication label configurations; and,
a processor for a computer configured to:
receive a first input selecting the medication information,
the patient information, and a medication label configuration
from the plurality of medication label configurations;
receive a second input including a patient photograph;
create, according to the medication label configuration, a
custom medication label including the medication information
and the patient information;
identify a silhouette from the patient photograph;
create instructions for cutting a portion of the custom
medication label to represent the silhouette; and,
transmit the custom medication label and the instructions.
The Examiner's Rejections
Claims 1-20 are rejected under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter. Final Act. 3--4; see also Ans. 2-3.
Claims 1-5, 11-15, and 20 are rejected under 35 U.S.C. § 103 as
being unpatentable over the combination of McGonagle et al. (US
2009/0139893 Al; published June 4, 2009) (hereinafter "McGanagle") and
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Sterling (US 2010/0043267 Al; published Feb. 25, 2010). Final Act. 5-10;
see also Ans. 3-5.
Claims 6-10 and 17-19 are rejected under 35 U.S.C. § 103 as being
unpatentable over the combination of McGonagle, Sterling, and Mitchell et
al. (US 2008/0150942 Al; published June 26, 2008) (hereinafter
"Mitchell"). Final Act. 11-13; see also Ans. 5---6.
PRINCIPLES OF LAW
Patent-eligible subject matter is defined in 35 U.S.C. § 101 of the Patent
Act, which recites:
Whoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new
and useful improvement thereof, may obtain a patent therefor,
subject to the conditions and requirements of this title.
There are, however, three judicially created exceptions to the broad
categories of patent-eligible subject matter in 35 U.S.C. § 101: laws of
nature, natural phenomena, and abstract ideas. Alice Corp. Pty. Ltd. v. CLS
Bank Int'!, 134 S.Ct. 2347, 2354 (2014); see also Mayo Collaborative Servs.
v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012). Although an abstract
idea itself is patent ineligible, an application of the abstract idea may be
patent eligible. Alice, 134 S.Ct. at 2355. Thus, we must 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. (citing Mayo, 566 U.S. at 78-
80). The claim must contain elements or a combination of elements that are
"sufficient to ensure that the patent in practice amounts to significantly more
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than a patent upon the [abstract idea] itself." Id. (citing Mayo, 566 U.S. at
72-73).
The Supreme Court sets forth a two-part "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, 134
S.Ct at 2355.
Id.
First, we determine whether the claims at issue are directed to
one of those patent-ineligible concepts. [Mayo, 566 U.S. at 76-
77]. If so, we then ask, "[ w ]hat else is there in the claims
before us?" Id., at [77-78]. 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., at [77-78]. We have 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." Id., at [71-
73].
ANALYSIS
We have reviewed Appellants' arguments (App. Br. 11--45; see also
Reply Br. 2-8), the Examiner's rejections (Final Act. 2-13), and the
Examiner's response to Appellants' arguments. Ans. 2-6. Appellants'
arguments have not persuaded us of error in the Examiner's conclusion that
the claims are directed to patent-ineligible subject matter. We are, however,
persuaded of error in the Examiner's rejection of claims 1-20 under 35
U.S.C. § 103(a).
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Re} ection Under 3 5 US. C. § 101
The Examiner concludes that claims 1-20 are directed to "receiving
patient medical information, creating a label, and transmitting the label,"
which is considered to be an abstract idea insomuch as such activity is
considered a combination of an idea itself and a method for organizing
human activity. 3 Final Act. 3--4; see also Ans. 2-3. The Examiner further
concludes that additional elements or combination of elements in the claims
other than the abstract idea per se do not provide meaningful limitations to
transform the abstract idea into a patent-eligible application of the abstract
idea. Final Act. 3--4; see also Ans. 2-3.
Regarding the first part of the Alice/Mayo analysis, Appellants argue
the Examiner erred in determining the claims are directed to an abstract idea
because: (1) "the Examiner has provided no evidence that the recited
limitations [directed to the abstract idea] are basic building blocks" (App.
Br. 15-18), (2) "the Examiner has provided no indication of any court
decision that supports the identified claim limitations and asserted abstract
idea" (App. Br. 18), (3) "the recited methods and systems cannot be
performed entirely in a human's mind" (App. Br. 19), and (4) "the recited
methods and system require the further acts of identifying a silhouette and
creating instructions for cutting a portion of a label to represent that
silhouette" (App. Br. 20). Regarding the second part of the Alice/Mayo
analysis, Appellants argue, the claim limitations "when viewed in
3 Appellants' arguments directed to the rejection under 35 U.S.C. § 101
address claims 1-20 as a group. App. Br. 9-21. Accordingly, we select
claim 1 as representative of the claims rejected under 35 U.S.C. § 101.
See 37 C.F.R. §4I.37(c)(iv).
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combination, add significantly more than 'receiving patient medical
information, creating a label and transmitting the label."' App. Br. 20-21.
We address Appellants' arguments in tum.
Regarding Appellants' above argument (1 ), Appellants argue the
Examiner erred because the Examiner did not show that the claims are
directed to an abstract idea as defined by Appellants. App. Br. 15-18.
Appellants contend the Court in Alice, although not providing an express
definition of an abstract idea, intended a definition through the examples
provided. App. Br. 15; see also Alice, 134 S.Ct. at passim. Appellants
conclude that based upon a reading of these examples, the definition of an
abstract idea is limited to "concepts that are critical to further innovation,
also known as human ingenuity, in a particular field of art. In short,
'abstract ideas' are the fundamental tools or basic building blocks of
innovation in a field of art." App. Br. 17. Accordingly, Appellants argue
the Examiner erred because "the Examiner has provided no evidence that the
recited limitations are basic building blocks." App. Br. 18. We are not
persuaded of Examiner error.
Appellants provide no explanation why the cited examples in Alice
lead Appellants to the proffered definition of an abstract idea. Id. Rather,
Appellants list several excerpts from Alice, followed by a statement
regarding the Court's intended definition of an abstract idea. Id. As such,
Appellants' arguments amount to attorney argument without supporting
evidence, and do not persuade us of Examiner error.
Additionally, we are not persuaded of Examiner error by Appellants'
above argument (2) that "the Examiner has provided no indication of any
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court decision that supports the identified claim limitations and asserted
abstract idea" App. Br. 18. As described in the Specification, Appellants'
invention is directed to "creat[ing] ... custom medication label[ s]."
Abstract. Specific embodiments, recited in the claims, are directed to
storing and selecting medication, patient, and label-configuration
information; receiving a patient photograph; creating, based on a selected
label configuration, a custom medication label including the medical and
patient information; identifying a silhouette from the photograph; creating
instructions for cutting a portion of the custom medication label to represent
the silhouette; and transmitting the custom medication label and the
instructions. App. Br. 7-9. The Examiner concludes that these concepts are
similar to those found in TL! Communications LLC v. AV Automotive LLC,
823 F.3d 607, 613 (Fed. Cir. 2016). Ans. 3. As explained by the Examiner,
the claims found to be abstract in TL! were directed to classifying and
storing digital images in an organized manner. Id. As further explained by
the Examiner, Appellants' claims store patient information and medical
information and identify a silhouette of the patient's photograph to cut into a
custom medication label. Id. The Examiner concludes that because
Appellants' claims are directed to receiving and inputting patient and
medical information along with a silhouette of a patient on a label, the
claims are directed to classifying and storing digital images in an organized
manner, as found abstract in TL!. Id. Appellants' argument that "the
Examiner has provided no indication of any court decision that supports the
identified claim limitations and asserted abstract idea" does not reveal
reversible error in the Examiner's conclusions. App. Br. 11-18.
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Regarding Appellants' above-argument (3), we are not persuaded of
Examiner error by Appellants' argument that "the recited methods and
systems cannot be performed entirely in a human's mind" because
Appellants' argument does not address the Examiner's specific conclusions.
App. Br. 19. The Examiner concludes that the claims are directed to a
combination of abstract ideas including mental processes that can be
performed in the human mind and by a human using a pencil and paper.
Final Act. 2--4; see also Ans. 3. Specifically, the Examiner concludes that
receiving patient medical information, as required by the claims, is a mental
process that can be performed in the human mind, and creating and
transmitting a label, as required by the claims, are mental processes that can
be performed by a human using a pen and paper. Final Act. 3--4; see also
Ans. 3. Appellants' argument that the recited methods and systems cannot
be performed entirely in the human mind neither addresses nor reveals
reversible error in the Examiner's conclusions regarding limitations that can
be performed by a human using a pen and paper. App. Br. 19; see also Final
Act. 3--4; and Ans. 3.
Appellants further argue ( above-argument ( 4)) the Examiner erred in
determining the claims are directed to an abstract idea because "the recited
methods and system do more than simply collect and compare data,[] the
recited methods and system require the further acts of identifying a
silhouette and creating instructions for cutting a portion of a label to
represent that silhouette. As such, independent Claims 1, 11 and 20 satisfy
the requirements of§ 101." App. Br. 20. We are not persuaded by this
argument. Appellants essentially list claim limitations without any
persuasive explanation of how the limitations either individually, or as an
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ordered combination, amount to an inventive concept that converts an
abstract idea into patent-eligible subject matter. Id. We therefore are not
persuaded of error in the Examiner's conclusion that that the claim
limitations, considered both individually and as an ordered combination, do
not transform the claims into patent-eligible subject matter.
Regarding the second part of the Alice/Mayo analysis, Appellants
argue, assuming arguendo that the claimed subject matter is directed to an
abstract idea, "the limitations recited in independent Claims 1, 11 and 20,
when viewed in combination, add significantly more than 'receiving patient
medical information, creating a label and transmitting the label."' App. Br.
20-21. Appellants further argue "each claim recites, in part, identifying a
silhouette from a patient photograph and creating instructions for cutting a
portion of the custom medication label to represent the silhouette. Clearly,
these limitations amount to more than simply 'receiving patient medical
information, creating a label and transmitting the label."' App. Br. 21. We
are not persuaded by this argument.
Appellants have not demonstrated how identifying a silhouette from a
patient photograph and creating instructions for cutting a portion of the
custom medication label to represent the silhouette amounts to significantly
more than the abstract idea of receiving patient medical information,
creating a label, and transmitting the label, such that the claims are
transformed into patent-eligible subject matter. App. Br. 20-21. For
example, Appellants have not demonstrated their claims provide a "solution
... necessarily rooted in computer technology in order to overcome a
problem specifically arising in the realm of computer networks," as
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explained by the Federal Circuit in DDR Holdings, LLC v. Hotels.com, LP,
773 F.3d 1245, 1257 (Fed. Cir. 2014), or provide an "unconventional
technological solution ... to a technological problem" that "improve[ s] the
performance of the system itself," as explained in Amdocs (Israel) Ltd. v.
Openet Telecom, Inc., 841 F.3d 1288, 1300, 1302 (Fed. Cir. 2016).
In view of the foregoing, we sustain the Examiner's rejection under
35 U.S.C. § 101 of representative claim 1, as well as claims 2-20 grouped
therewith.
Rejections Under 35 US.C. § 103
The Examiner finds the combination of McGonagle and Sterling
teaches "identify a silhouette from the patient photograph" and "create
instructions for cutting a portion of the custom medication label to represent
the silhouette," as recited in independent claim 1, and similarly recited in
independent claims 11 and 20. 4 Specifically, the Examiner finds
McGonagle's customization of a product package to include a photograph of
a patient teaches identifying a silhouette from a patient photograph, and
finds Sterling's disclosure of a label having a tear away device (e.g., a tab) to
remove redacted information teaches creating instructions for cutting a
portion of the custom medication label to represent the silhouette. Final Act.
6; see also Ans. 4; and Sterling ,r 54. The Examiner explains that because
Sterling's "tear away device is provided for a right handed or left handed
person as taught in Paragraph 0054," Sterling "teaches an instruction for
cutting a portion of the custom medication label to represent the silhouette
4 With respect to claims 2-20, Appellants' arguments present us with the
same dispositive issues as independent claim 1.
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because the tear away device is separate of the label." Ans. 4; see also
Sterling ,r 54.
Appellants argue that McGonagle and Sterling are entirely silent
regarding identifying a silhouette from a "patient photograph" and
"creating" "instructions for cutting a portion of a custom medication label to
represent the silhouette." App. Br. 35. Appellants further argue that
Sterling's disclosure of a tab that can be tom away to remove redacted
information does not teach creating instructions for cutting a portion of the
label to represent the silhouette. See Reply Br. 5.
We are persuaded by Appellants' arguments. We acknowledge that
the Examiner relies upon Sterling's disclosure of a tear away device to teach
cutting a portion of a customized label. Final Act. 6; see also Ans. 4. The
Examiner, however, has not sufficiently explained how Sterling's teaching
of a tear-away device that can be removed by either a left-handed or a right-
handed person, teaches instructions for cutting a portion of a custom
medication label to represent the silhouette. See Final Act. 6; see also Ans.
4. The Examiner's finding is not supported by the express disclosure of
Sterling and relies upon conjecture. Such conjecture would require us to
resort to speculation, unfounded assumptions, or improper hindsight
reconstruction. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). We
will not resort to such speculation or assumptions to cure the deficiencies in
the factual basis in order to support the Examiner's rejections.
In view of the foregoing, we do not sustain the Examiner's rejection
of claims 1-20 under 35 U.S.C. § 103(a).
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DECISION
We affirm the Examiner's rejection of claims 1-20 under
35 U.S.C. § 101.
We reverse the Examiner's obviousness rejections of claims 1-20
under 35 U.S.C. § 103(a).
Because we affirm at least one ground of rejection with respect to
each claim on appeal, we affirm the Examiner's decision to reject all of the
pending claims.
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 )(iv).
AFFIRMED
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