Ex Parte Jakobovits

Patent Trial and Appeal Board

Sep 21, 2018

11943355 (P.T.A.B. Sep. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/943,355 11/20/2007
99434 7590 09/25/2018
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
Rex Jakobovits
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.
050704/347253 3325
EXAMINER
NGUYEN, TRAN N
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
09/25/2018 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 REX JAKOBOVITS
Appeal2017-001053 1
Application 11/943,3552
Technology Center 3600
Before ST. JOHN COURTENAY III, SCOTT B. HOWARD, and
JOHN D. HAMANN, Administrative Patent Judges.
HAMANN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant files this appeal under 35 U.S.C. § 134(a) from the
Examiner's Final Rejection of claims 1-7, 15-20, and 26-41. We have
jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 Our decision relies upon Appellant's Appeal Brief ("App. Br.," filed Dec.
14, 2015), Reply Brief ("Reply Br.," filed Oct. 24, 2016), and Specification
("Spec.," filed Nov. 20, 2007), as well as the Examiner's Answer ("Ans.,"
mailed Aug. 25, 2016) and the Final Office Action ("Final Act.," mailed
Mar. 13, 2015).
2 According to Appellant, the real party in interest is McKesson
Technologies, Inc. App. Br. 2.
Appeal2017-001053
Application 11/943,355
THE CLAIMED INVENTION
Appellant's claimed invention relates to "managing medical images
and associated text and data, and more specifically, to the creation and use of
medical image knowledge bases for decision support, reference, training,
consultation, and collaboration." Spec. 2. Claim 1 is representative of the
subject matter on appeal and is reproduced below.
1. A method comprising:
receiving, by a server, a plurality of medically-related
documents, the plurality of documents being associated with
one or more medical cases;
transcoding a received document from a first format in
which the document was received to a second format, the
second format being different from the first format and being
compatible for integration into a web page displayable in a web
browser;
selectively organizing the received documents, by the
server, based at least in part on one or more of document type
or document content into one or more case portfolios, wherein
the one or more case portfolios comprise a web page generated
based at least in part on one or more of the received documents
and including the transcoded document;
integrating client-side logic with each of the case
portfolios to facilitate interactive viewing and editing of the
client portfolios in the web browser; and
causing storage, at the server, of the one or more case
portfolios for selective distribution in response to one or more
future requests for corresponding interactive viewing and
editing of the documents of the distributed case portfolios.
REJECTION ON APPEAL
The Examiner rejected claims 1-7, 15-20, and 26-41 under 35 U.S.C.
§ 101 as being directed to patent ineligible subject matter.
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ANALYSIS
We have reviewed the Examiner's rejection in light of Appellant's
contentions that the Examiner erred. We disagree with Appellant's
contentions for the reasons discussed below.
(1) Claim Grouping
Appellant argues that the Examiner "fails to provide any analysis or
argument" for independent claims 15, 33, and 37, despite these claims
having separate, independent scope from independent claim 1. See App. Br.
10. Rather than such an analysis, Appellant contends the Examiner only
provides a conclusory statement (i.e., "[a]s per claim(s) 15-20, 33-38, 41,
this/these claim(s) is/are also hereby rejected for substantially similar
rationale as applied to claim(s) 1-7, 26-32, 39-40 above, and incorporated
herein."), which is "[in]sufficient to enable Appellant to present reasoned
arguments rebutting the conclusions reached by" the Examiner. Id. at 10-11
( citing Final Act. 4 ).
The Examiner finds that independent claims 15, 33, and 37 recite an
abstract concept similar to that of claim 1. Ans. 2; Final Act. 4. The
Examiner also finds that "[a]lthough of differing scope," these other
independent claims fail to recite any additional elements that would, either
individually or in ordered combination, provide significantly more than the
abstract concept and do not provide "beyond what is routine, conventional,
and well-understood in the art." Ans. 2. The Examiner also finds that the
dependent claims (i.e., 2-7, 16-20, 26-32, 34--36, 38--41) do not remedy the
deficiencies of their parent claim, and are, therefore, rejected for the same
rationale as applied to the parent claim. Final Act. 4.
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Application 11/943,355
We are not persuaded by Appellant's argument that the Examiner fails
to sufficiently address independent claims 15, 33, and 37, and their
dependent claims. We find that the Examiner has sufficiently set forth a
prima facie case of unpatentability for these claims based on the Examiner
(i) rejecting these claims for the same reasoning as articulated for claim 1,
and (ii) finding that these claims fail to recite any additional elements that
would add significantly more to the abstract concept itself, beyond "what is
routine, conventional, and well-understood in the art." Appellant fails to
persuasively address substantively this finding.
Appellant argues the pending claims as a group as Appellant does not
provide separate, substantive arguments for claims other than claim 1. See
generally App. Br.; Reply Br. Thus, we decide the appeal of the§ 101
rejection on the basis of representative claim 1, and refer to the rejected
claims collectively herein as "the claims." See 37 C.F .R. § 41.37 ( c )(1 )(iv);
In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
(2) § 1 OJ Re;ection
Appellant contends the Examiner improperly rejected the claims
under 35 U.S.C. § 101. See App. Br. 13-26; Reply Br. 2-9. According to
Appellant, the claims do not concern an abstract idea, and even if they did,
the claims would be patent eligible because the claims amount to
significantly more than an abstract idea. See App. Br. 13. We find
Appellant's arguments unpersuasive.
Section 101 of the Patent Act provides that "[ w ]hoever 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
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title." 35 U.S.C. § 101. The Supreme Court has explained that this
provision is subject to a long-standing, implicit exception: "[l]aws of nature,
natural phenomena, and abstract ideas are not patentable." Alice Corp. Pty.
v. CLS Bank Int'!, 134 S. Ct. 2347, 2354 (2014). The Court has set forth a
two-part inquiry to determine whether this exception applies. First, we must
determine if the claim at issue is directed to one of those patent-ineligible
concepts. Id. at 2355. Second, if the claim is directed to one of those
patent-ineligible concepts, we must consider the elements of the 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. ( quotation marks omitted) ( quoting Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72 (2012)).
(i) Abstract ideas
We first consider whether the Examiner properly concluded the
claims are directed to one or more abstract ideas. For example, the
Examiner concluded that the claims are directed to the abstract ideas of:
receiving data, processing data, sorting data, appending data,
and storing data, which corresponds to the concepts identified
as abstract ideas by the courts, such as comparing new and
stored information and using rules to identify options in
SmartGene,[ 3] and using categories to organize and store
information for transmission in Cyberfone. [4]
Ans. 3 (emphasis added). The Examiner concludes that "[t]he concept
described in th[ e] claim[ s] is not meaningfully different from those found by
3 SmartGene, Inc. v. Adv. Bio. Labs., SA, 555 Fed. App'x 950 (Fed. Cir.
2014).
4 Cyberfone Systems, LLC v. CNN Interactive Group, Inc., 558 Fed. App'x
988, 991-92 (Fed. Cir. 2014).
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the courts to be abstract ideas. As such, the description in th[ e] claim[ s] is an
abstract idea." Id. at 3--4.
Appellant argues the claims are not directed to an abstract idea. Reply
Br. 2---6. Appellant argues that the Examiner oversimplifies the claims, and
fails to evaluate the claims as a whole and an ordered combination of
individual steps. Id. at 2-3 ( citations omitted). Appellant also argues that
the abstract ideas of "'receiving data, processing data, sorting data,
appending data, and storing data' is too far removed from the claim
language" and "boil[s] away too many features from the claims themselves,"
such as "transcoding." Id. at 3--4.
Appellant also argues that the Examiner improperly relies on the
SmartGene and Cyberfone decisions, as they are non-precedential opinions.
Id. at 5. Appellant also argues that (i) "Cyberfone relates to obtaining data,
'exploding' the data into component parts, and sending those parts to
different destinations," which are unrelated to the claimed features and
(ii) SmartGene limits its opinion to something that could be done in one's
head, which the claimed transcoding cannot be. Id. at 4--5. Appellant also
argues that Cyberfone and SmartGene are pre-Alice cases and, thus, are
"insufficient to establish that the pending claims are directed to an abstract
idea." Id. at 5.
In contrast, Appellant relies on Enfzsh 5 and argues it "holds that
specific improvements to computer technology are, as a matter of law, not
abstract[,] ... set[ting] forth a dichotomy between claims that 'are directed
to an improvement to computer functionality versus being directed to an
abstract idea."' Id. (citing Enfzsh, 822 F.3d at 1335). Appellant argues that
5 Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016).
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the present claims, like in Enfzsh, provide an improvement to computer
functionality. Id. Specifically, Appellant argues that the claims "provide[] a
novel and nonobvious solution for conversion of a document to a version
displayable by a web browser." Id. at 5-6. Moreover, Appellant contends
that "[t]here is no manual analog for this activity because it solves a problem
emerging from the ubiquity of the [I]ntemet, and similarly there is no way to
manually carry out the claimed procedure that would produce similar
results." Id.
Appellant has not persuaded us that the Examiner errs. The Federal
Circuit has explained that the abstract-idea inquiry requires "looking at the
'focus' of the claims, their 'character as a whole,"' to determine if the claims
are directed to an abstract idea. Elec. Power Grp., LLC v. Alstom S.A., 830
F.3d 1350, 1353 (Fed. Cir. 2016). We agree with the Examiner that the
claims are directed to the abstract ideas of receiving data, processing data,
sorting data, appending data, and storing data, which are akin to at least the
claims in Electric Power, which "though lengthy ... the claims d[id] not go
beyond requiring the collection, analysis, and display of available
information in a particular field, stating those functions in general terms,
without limiting them to technical means for performing the functions that
are arguably an advance over conventional computer and network
technology." Id. at 1351.
We also are not persuaded by Appellant's reliance on Enfzsh. Unlike
the claims in Enfzsh- systems comprising means for configuring memory
according to a self-referential table -that were found to be directed to "an
improvement to [the] computer functionality itself' (Enfish, 822 F.3d at
1336), the instant claims are more akin to the claims for collecting,
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analyzing, and displaying information found to be patent ineligible in
Electric Power (830 F.3d at 1353), or the claims directed to image data
processing discussed in Digitech Image Technologies, LLC v. Electronics for
Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014) (finding "a process that
employs mathematical algorithms to manipulate [ data or] information to
generate additional information is not patent eligible"). See Electric Power,
830 F.3d at 1353-54 (citing Digitech, 758 F.3d at 1351). Furthermore,
nothing in the claims, understood in light of the Specification, requires
anything other than an off-the-shelf, conventional computer used for
collecting and processing/analyzing various information/data. Therefore,
unlike in Enfzsh, the claims are not directed to improvements in computer
functionality.
We find that Electric Power and Digitech are sufficiently analogous to
establish that the instant claims are directed to an abstract idea. See Enfish,
822 F.3d at 1334 (explaining that when determining whether claims are
directed to an abstract idea, "both this court and the Supreme Court have
found it sufficient to compare [the] claims at issue to those claims already
found to be directed to an abstract idea in previous cases"). Furthermore, we
also find that SmartGene ( comparing new and stored information and using
rules to identify options) and Cyberfone (using categories to organize and
store information for transmission) are persuasive authority that also support
the Examiner's finding of an abstract idea.
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(ii) Inventive concept
We next consider whether the Examiner correctly concluded the
claims do not include an "inventive concept-i.e., an element or combination
of elements that is sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [ineligible concept] itself." Alice,
134 S. Ct. at 2355 (quotation marks omitted) (quoting Mayo, Inc., 566 U.S.
at 72-73). The Examiner finds that the claims recite computer components
at "a high level of generality and are recited as performing generic computer
functions routinely used in computer applications[,] ... that are well-
understood, routine and conventional activities amount[ing] to no more than
implementing the abstract idea with a computerized system." Ans. 5.
Accordingly, the claims do not amount to significantly more than the
abstract idea itself. Id. at 6.
Appellant contends that the claims add significantly more to the
abstract idea. App. Br. 20-23; Reply Br. 6-8. Appellant argues that the
"claims include at least improvements in a technical field." App. Br. 20.
More specifically, Appellant argues that the claims recite "limitations of a
novel medical record hosting system, including novel components that
format documents in a manner that includes client-side logic to allow for
viewing of those documents by clients remote to the hosting system." Id. at
21. Appellant argues that the claims also "provide for interactive viewing
and editing of those documents in a novel and nonobvious manner." Id.
Appellant contends that these claim features "represent improvements to
hospital record management systems in a manner that, as conceded in the
Office Action, is not anticipated or rendered obvious by the cited prior art."
Id.
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In addition, Appellant contends that, as in DDR, 6 the present "claims
provide a technological solution to a technological problem and as such
recite significantly more than" an abstract idea. App. Br. 23. More
specifically, Appellant argues the claims:
are directed to a specific way to host and format documents to
be accessed by remote computers that addresses a problem
related to remote hosting. In particular, ... medical images are
not typically presented in a format suitable for remote web
viewing. . . . [S]uch images ... are unsuitable for displaying
via a web server [because] clients typically lack the appropriate
applications for viewing such images. These problems are
unique and specific to the world of electronic medical imaging
technology, and have no corresponding manual analog.
To address these problems, the inventors have developed
novel systems that transcode received images and append
appropriate logic for rendering such images in a client device
(e.g., a web browser).
Id. at 22-23; see also Reply Br. 7.
Furthermore, Appellant argues that "an inventive concept can be
found in the nonconventional and non-generic arrangement of known,
conventional pieces." Reply Br. 8 (citing Bascom Global Internet Servs.,
Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016)).
Appellant argues that the claims contain non-conventional limitations ( e.g.,
"transcoding"), "thus demonstrat[ing] an 'invention concept' amounting to
'significantly more' than the allegedly abstract idea." Id.
We agree with the Examiner that the claims do not amount to
significantly more than the abstract ideas. Rather, the claims simply recite
generic computer components ( e.g., server, logic, and storage) and functions
( e.g., receiving, processing, sorting, appending, and storing data). See
6 DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014).
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buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014)
(finding the invocation of computers and generic functionality adds no
inventive concept). Moreover, nothing in the claims, understood in light of
the Specification, requires anything other than an off-the-shelf, conventional
computers used for collecting and processing/analyzing various
information/ data. Therefore, unlike the claims considered by the court in
Enfish, the claims here are not directed to an improvement in computer
capabilities, but to the results of applying an abstract idea.
In addition, we are not persuaded by Appellant's reliance on DDR.
Unlike the current claims, DDR addressed a technological problem specific
to a particular technological environment by implementing a specific
solution for that technological environment and different from the routine or
conventional use for that environment. See DDR, 773 F.3d at 1258-59
(finding "the claims at issue here specify how interactions with the Internet
are manipulated to yield a desired result-a result that overrides the routine
and conventional sequence of events ordinarily triggered by the click of a
hyperlink"). Appellant's claims are more akin to a generic computer
programmed with conventional steps to be carried out by a generic computer
(i.e., "'apply it with a computer"'), and, thus, fail to provide an inventive
concept - Appellant has not shown that transcoding does anything more
than conventionally reformat documents. See Versata Dev. Grp., Inc. v. SAP
Am., Inc., 793 F.3d 1306, 1332 (Fed. Cir. 2015) (quoting Alice, 134 S. Ct. at
2358) (finding an inventive concept "requires more than simply stating an
abstract idea while adding the words 'apply it' or 'apply it with a
computer"'). We also find Appellant's citation of Bascom unavailing. The
"inventive concept" "must be significantly more than the abstract idea itself,
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and cannot simply be an instruction to implement or apply the abstract idea
on a computer." Bascom, 827 F.3d at 1349.
We also are not persuaded by Appellant's argument (e.g., Reply Br.
8-9) that the claims pose no risk of preempting the abstract idea itself. A
lack of preemption does not make a claim patent eligible. See Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)
("While preemption may signal patent ineligible subject matter, the absence
of complete preemption does not demonstrate patent eligibility."); OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362-63 (Fed. Cir. 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.").
Additionally, we are not persuaded by Appellant's argument that the
claimed subject matter is unconventional and adds significantly more
because it is not found in the prior art. A finding of novelty or
nonobviousness does not necessarily lead to the conclusion that subject
matter is patentable eligible. "Groundbreaking, innovative, or even brilliant
discovery does not by itself satisfy the § 101 inquiry." Ass 'n for Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013).
For the above reasons, we sustain the Examiner's rejection of claim 1,
as well as claims 2-7, 15-20, and 26-41, grouped therewith.
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DECISION
We affirm the Examiner's§ 101 rejection of claims 1-7, 15-20, and
26-41.
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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