Ex Parte Hyde et al

Patent Trial and Appeal Board

Apr 16, 2018

13374750 (P.T.A.B. Apr. 16, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/374,750 01109/2012 Roderick A. Hyde
80118 7590 04/18/2018
Constellation Law Group, PLLC
P.O. Box 580
Tracyton, WA 98393
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.
SE2-1339-US 9679
EXAMINER
HUNTER, SEAN KRISTOPHER
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
04/18/2018 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RODERICK A. HYDE, EDWARD K.Y. JUNG,
JORDIN T. KARE, ERIC C. LEUTHARDT, ROYCE A. LEVIEN,
RICHARDT. LORD, ROBERT W. LORD, MARK A. MALAMUD,
JOHN D. RINALDO JR., DENNIS J. RIVET, CLARENCE T. TEGREENE
and LOWELL L. WOOD JR. 1
Appeal2017-000826
Application 13/374,750
Technology Center 3600
Before ROBERT E. NAPPI, CARLL. SILVERMAN, and
MONICA S. ULLAGADDI, Administrative Patent Judges.
NAPPI, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner's Final Rejection of claims 1, 3 through 19, 21 through 23, 25
through 29, 49 through 69 and 89. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Elwha LLC. App.
Br. 4.
Appeal2017-000826
Application 13/374,750
INVENTION
Appellants' disclosed invention is directed to an electronic healthcare
information management system where a record indicating that a patient
received of a first protocol (e.g. one or more instances of diagnostic
evaluations, regimen implementations, or medical interventions) is updated
to include an effectiveness indication. See Spec. paras. 5, 97. Claim 1 is
representative of the invention and reproduced below.
1. A healthcare information management system
compnsmg:
circuitry for obtaining an indication of a first protocol
being employed in relation to a particular condition in a first
patient;
circuitry for requesting an effectiveness indication for the
first protocol from an entity partly based on responsive to the
entity validating the first protocol and partly based on responsive
to a first communication delay associated with the first protocol,
the first communication delay exceeding one hour, the entity
being or not being the first patient; and
circuitry for signaling a decision whether to update a
prominence indication of the first protocol in response to the
effectiveness indication for the first protocol received from the
entity.
REJECTIONS AT ISSUE2
The Examiner has rejected claims 1, 3 through 19, 21 through 23, 25
through 29, 49 through 69 and 89 under 35 U.S.C. § 101 for being directed
to patent-ineligible subject matter. Answer 2.
2 Throughout this Decision we refer to the Appeal Brief filed January 11,
2016, Reply Brief filed October 12, 2016, Final Office Action mailed April
9, 2015, Appellants' Specification submitted January 9, 2012, and the
Examiner's Answer mailed August 12, 2016.
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The Examiner has rejected claims 1, 3 through 19, 21 through 23, 25
through 29, 49 through 69 and 89 under 35 U.S.C. § 103 as being
unpatentable over Farooq (US 2011/0295622 Al; published Dec. 1, 2011)
and Dempsey (US 2010/0321180 Al; published Dec. 23, 2010). Answer 3-
22.
PRINCIPLES OF LAW
Patent-eligible subject matter is defined in§ 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 § 101: laws of nature, natural
phenomena, and abstract ideas. Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 134
S. Ct. 2347, 2354 (2014); 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 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
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abstract ideas from those that claim patent-eligible applications of those
concepts." Id. 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].
Our reviewing court has said the "relevant inquiry at step one [of the
Alice steps] is 'to ask whether the claims are directed to an improvement to
computer functionality versus being directed to an abstract idea."' In re TL!
Commc'ns LLC Patent Litig., 823 F.3d 607, 612 (Fed. Cir. 2016) (internal
cite omitted).
Under the second step of the Alice/Mayo framework, we examine the
claim limitations "more microscopically," (Electric Power Group, LLC v.
Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016)), to determine whether
they contain "additional features" sufficient to "'transform the nature of the
claim' into a patent-eligible application." Alice, 134 S. Ct. at 2355, 2357
(quoting Mayo, 566 U.S. at 78). "Mere recitation of concrete, tangible
components is insufficient to confer patent eligibility to an otherwise
abstract idea. Rather, the components must involve more than performance
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of 'well-understood, routine, conventional activit[ies]' previously known to
the industry." TL!, 823 F.3d at 613 (citing Alice, 134 S. Ct. at 2359).
ANALYSIS
We have reviewed Appellants' arguments in the Briefs, the
Examiner's rejections, and the Examiner's responses to Appellants'
arguments. Appellants' arguments have not persuaded us of error in the
Examiner's determination that the claims are directed to patent-ineligible
subject matter. Appellants' arguments, however, have persuaded us of error
in the Examiner's obviousness rejection.
Rejection under 35 USC§ 101
Appellants argue on pages 7 through 9 of the Appeal Brief that the
Examiner has not established the claims are directed to an abstract idea.
Appellants argue that the Patent Office "has provided no evidence
demonstrating that the 'obtaining, requesting and signaling steps as recited
in Claims 1, 29, 49, 69 and 89' could be properly interpreted as "comparing
new and stored information and using rules to identify options." App. Br.
8.3
The Examiner has found that the claims are directed to an abstract
idea stating:
The Examiner respectfully notes that the claims as
currently submitted by the Appellant are directed to the abstract
idea of "comparing new and stored information and using rules
3 Appellants also argue, on page 6 and 7 of the Reply Brief, that the
Examiner's response to this argument is an improper new ground of
rejection. We have not considered this issue as it relates to a petitionable
issue, and is waived. See 37 C.F.R. § 41.40 (Failure of Appellant to timely
file such a petition will constitute a waiver of any arguments that a rejection
must be designated as a new ground of rejection.)
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to identify options". Several cases have found concepts relating
to processes of comparing data that can be performed mentally
abstract, such as comparing new and stored information and
using rules to identify options (SmartGene). While the claims
as currently amended and submitted by the Appellant may not
explicitly recite "comparing new and stored information and
using rules to identify options", the concept of "comparing new
and stored information and using rules to identify options" is
described, for example, by the obtaining, requesting and
signaling steps as recited in independent Claims 1, 29, 49, 69
and 89.
Answer 3. Further, the Examiner finds that the recitation of "circuitry" in the
claims, when interpreted in light of the Specification, involves nothing more
than use of general purpose computers. Answer 25.
We concur with the Examiner's analysis on pages 25 through 27 of
the Answer. Appellants' arguments have not persuaded us that
representative claim 1 does not recite an abstract idea.
The Federal Circuit has explained that, in determining whether claims
are patent-eligible under Section 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." Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288,
1294 (Fed. Cir. 2016). The Federal Circuit also noted in that decision that
"examiners are to continue to determine if the claim recites (i.e., sets forth or
describes) a concept that is similar to concepts previously found abstract by
the courts." Id. at 1294 n.2.
In the instant case the Examiner has compared the steps of the claims
with claims held to be abstract by the court in SmartGene, Inc. v. Advanced
Biological Labs., SA, 555 Fed. App'x 950 (Fed. Cir. 2014) (non-
precedential). Answer 25. Further, the Examiner notes that although the
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claims do not explicitly recite comparing new and stored information and
using rules to identify options as in SmartGene, the claims recite similar
steps. Id.
Representative independent claim 1 recites limitations directed to:
obtaining information (of a first protocol), requesting an effectiveness
indication (requesting information based upon some conditions (i.e. rules))
and signaling the update of a prominence indication in response to the
effectiveness indication. Thus, we concur with the Examiner that the claims
are directed to the abstract idea of comparing new and stored information
and using rules to identify options. We also concur with the Examiner that
the claims are similar to those held to be abstract in by the court in
SmartGene (the court held the claims to be abstract where they do "no more
than call on a 'computing device,' with basic functionality for comparing
stored and input data and rules, to do what doctors do routinely.")
SmartGene, 555 Fed. App'x at 954. Further, the claims are similar to those
considered to be abstract by the court in Electric Power Group, 830 F.3d at
1354 (holding that claims directed to a process of gathering and analyzing
information of a specific content are directed to an abstract idea) and
Content Extraction and Transmission LLC. v. Wells Fargo Bank, Nat'!
Ass 'n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (holding that the claims were
"drawn to the abstract idea of 1) collecting data, 2) recognizing certain data
within the collected data set, and 3) storing that recognized data in a
memory.").
In Electric Power Group, the court stated "we have treated collecting
information including when limited to particular content (which does not
change its character as information), as within the realm of abstract ideas."
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Id. at 1353. Further, the court stated that "merely presenting the results of
abstract processes of collecting and analyzing information, without more
(such as a identifying a particular tool for presentation), is abstract as an
ancillary part of such collection and analysis." Id. at 1354. Thus,
Appellants' arguments have not persuaded us the Examiner erred in finding
the claims are directed to an abstract idea as representative claim 1 recites a
concept similar to those held to be abstract by the courts. 4
Appellants argue on pages 9 through 11 of the Appeal Brief, that the
Examiner's rejection is in error, as the claims do not pre-empt others from
using the abstract idea as claims are directed to the specific context of
signaling whether to update a prominence indication.
This argument is not persuasive of error. As stated by the Examiner,
while "preemption is the concern driving judicial exceptions to patent
eligibility, preemption is not a stand-alone test for eligibility." Answer 26.
Our reviewing court has said "[ w ]here a patent's claims are deemed only to
disclose patent ineligible subject matter under the Mayo framework, []
preemption concerns are fully addressed and made moot." Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
Appellants argue on pages 11 through 14 of the Appeal Brief that the
rejection under 35 U.S.C. § 101 is in error as the claims recite significantly
more. Specifically, Appellants argue that the claims effectuate a
transformation of an article to different thing, as the "prominence indication"
is "representative of a physical object or substance" and is updated with a
4 Appellants' arguments directed to the rejection of under 35 U.S.C.
§ 101 address the claims as a group. Accordingly, we select claim 1 as
representative of the claims rejected under 101. See 37 C.F.R. §41.37(c)(iv).
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transformation. App. Br. 12-13. Further, Appellants argue that the
limitation directed to signaling an update to the prominence indicator is not a
well understood, routine and conventional in the field. App. Br. 13-14.
We are not persuaded of error by these arguments. Initially, we note
that while the indication may be of a physical object, changing the indication
is not the same thing as changing the physical object, thus we do not find
that the claims recite transformation of an article to different thing. Second,
Appellants' Specification contradicts Appellants' assertion that the "update
to the prominence indicator is not a well understood, routine and
conventional." Paragraph 98 of Appellants' Specification states, "numerous
existing techniques may be applied for configuring special purpose circuitry
or other structures effective for calculating and disseminating prominence
indications." Thus, demonstrating that calculation of prominence
indications is accomplished using existing techniques (conventional
techniques). As such, Appellants have not persuaded us that representative
claim 1 recites significantly more than the abstract idea and we sustain the
Examiner's rejection of claims 1, 3 through 19, 21through23, 25 through
29, 49 through 69 and 89 under 35 U.S.C. § 101.
Rejection under 35 USC§ 103
Appellants argue on pages 15 through 34 of the Appeal Brief that the
Examiner's obviousness rejection of independent claims 1, 29, 49, 69 and 89
is in error. The dispositive issue presented by these arguments is: did the
Examiner err in finding that the combination of Farooq and Dempsey teach
requesting an effectiveness indication protocol from an entity party based
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upon a response to the entity validating the first protocol and partly on a
communication delay, as recited in each of the independent claims.
The Examiner's rejection cites to and quotes paragraphs 5, 6, 8, 18, 20
21, 24, 25, 26, 29, 34, 35, 44, 46 and 52 ofFarooq with respect to teaching
this limitation. Final Act. 4--5, Answer 4--5. In response to Appellants'
arguments, the rejection cites to these passages and states that the paragraphs
arguably includes the Appellants' recitation in part of "requesting an
effectiveness indication for the first protocol .... " See e.g., Answer 27.
We are persuaded of error by Appellants' augments as we do not find
that the Examiner has provided sufficient rationale or explanation as to what
teaching of Farooq corresponds to the claimed effectiveness indication and
how Farooq teaches that the indications are provided in the manner claimed.
It is unclear as to whether the Examiner is equating the remittance or lack of
remittance to the claimed effectiveness indication, or if there is some other
data point the Examiner is equating with the claimed effectiveness
indication. Similarly, the Examiner has not shown where or explained how
the references teach an effectiveness parameter is provided in the manner
claimed. Thus, we do not find the Examiner has identified sufficient
evidence to show that the combination of the references teaches the
limitations directed to requesting an effectiveness indication protocol from
an entity partly based upon a response to the entity validating the first
protocol and partly on a communication delay, as recited in each of the
independent claims. Accordingly, we do not sustain the Examiner's
obviousness rejection of claims 1, 3 through 19, 21through23, 25 through
29, 49 through 69 and 89.
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DECISION
We affirm the Examiner's rejection of claims 1, 3 through 19, 21
through 23, 25 through 29, 49 through 69 and 89 under 35 U.S.C. § 101.
We reverse the Examiner's rejection of claims 1, 3 through 19, 21
through 23, 25 through 29, 49 through 69 and 89 under 35 U.S.C. § 103.
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). See 37
C.F.R. § 41.50(f).
AFFIRMED
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