Ex Parte Joao

Patent Trial and Appeal Board

May 23, 2017

11978461 (P.T.A.B. May. 23, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
RJ 471 5148
EXAMINER
NAJARIAN, LENA
ART UNIT PAPER NUMBER
3686
MAIL DATE DELIVERY MODE
11/978,461 10/29/2007
7590 05/24/2017
RAYMOND A. JOAO, ESQ.
122 BELLEVUE PLACE
YONKERS, NY 10703
Raymond Anthony Joao
05/24/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAYMOND ANTHONY JO AO
Appeal 2016-0032771
Application 11/978,461
Technology Center 3600
Before JASON V. MORGAN, JON M. JURGOVAN, and
AMBER L. HAGY, Administrative Patent Judges.
HAGY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 41—90, which are all of the pending claims.3 We
have jurisdiction over these claims under 35 U.S.C. § 6(b).
We affirm.
1 Application Serial Nos. 11/978,366 and 12/589,294 are identified by
Appellant as related (Br. 2), and are addressed in co-pending Appeal Nos.
2016-002062 and 2016-002070, respectively.
2 Appellant identifies the real party in interest as GTJ Ventures, LLC. (Br.
1.)
3 Claims 1—40 have been canceled. (Br. 2.)
Appeal 2016-003277
Application 11/978,461
Introduction
According to Appellant, “[t]he present invention pertains to an
apparatus and a method for processing and/or for providing healthcare
information and/or healthcare-related information and, in particular, to an
apparatus and a method for processing and/or for providing healthcare
information and/or healthcare-related information for a variety of healthcare
and healthcare related applications.” (Spec. 1.)
Exemplary Claim
Claims 41,61,81, and 82 are independent. Claim 41, reproduced
below, is exemplary of the claimed subject matter:
41. A computer-implemented method, comprising:
processing, with a processor or with a computer,
information regarding a request by a person or an entity to access,
obtain, change, alter, update, or modify, information contained
in an individual’s or patient’s healthcare record or an individual’s
or patient’s healthcare file of the individual or patient;
generating, with the processor or with the computer, a
message containing information regarding the person or the
entity making the request or identification information regarding
the person or the entity making the request, and further wherein
the message contains an actual change, alteration, update, or
modification, sought to be made or made to the information
contained in an individual’s or patient’s healthcare record or an
individual’s or patient’s healthcare file; and
transmitting, with or from a transmitter, the message to a
communication device of, associated with, or used by, the
individual or patient, wherein the message is transmitted to the
communication device of the individual or patient during,
concurrently with, at a same time as, or prior to a completion of,
an accessing, an obtaining, a changing, an altering, an updating,
or a modifying, of the information contained in an individual’s
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Application 11/978,461
or patient’s healthcare record or an individual’s or patient’s
healthcare file by the person or the entity, or during, concurrently
with, at a same time as, or prior to a completion of, a processing
of the request to access, obtain, change, alter, update, or modify,
the information contained in an individual’s or patient’s
healthcare record or an individual’s or patient’s healthcare file.
REJECTION
Claims 41—90 stand rejected under 35U.S.C. § 101 as directed to
patent-ineligible subject matter. (Final Act. 2-4.)
ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellant’s
arguments the Examiner has erred. We disagree with Appellant’s
conclusions and we adopt as our own: (1) the findings and reasons set forth
by the Examiner in the action from which this appeal is taken (Final Act. 2—
3) and (2) the reasons set forth by the Examiner in the Examiner’s Answer in
response to Appellant’s Appeal Brief. (Ans. 2—7.) We concur with the
conclusions reached by the Examiner, and we highlight the following for
emphasis.4
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: “[ljaws of nature, natural phenomena, and
4 Only those arguments made by Appellant have been considered in this
decision. Arguments Appellant did not make have not been considered and
are deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv) (2014).
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Application 11/978,461
abstract ideas” are not patentable. See, e.g., Alice Corp. Pty. Ltd. v. CLS
Banklnt’l, 134 S. Ct. 2347, 2354 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus Labs.,
Inc., 132 S. Ct. 1289, 1300 (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 Corp., 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., e.g., to an
abstract idea. If the claims are not directed to a patent-ineligible concept, 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.” Alice
Corp., 134 S. Ct. at 2355 (quotingMayo, 132 S. Ct. at 1297).
The Court acknowledged in Mayo that “all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas.” Mayo, 132 S. Ct. at 1293. We, therefore, look to whether
the claims focus on a specific means or method that improves the relevant
technology or are instead directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery. See
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
Here, in rejecting claims 41—90 under 35 U.S.C. § 101, the Examiner
concludes the claims are directed to the “abstract idea of sending a
message,” which the Examiner finds “is a method of organizing human
activities.” (Final Act. 2.) Appellant argues the Examiner erred in
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concluding the claims are directed to an abstract idea. In particular, with
regard to independent claim 41, Appellant argues the claim is directed to a
“method or process of using an electronic healthcare record which can
provide notification to an individual or patient when an access, an obtaining,
a changing, an altering, an updating, or a modifying, of or regarding his or
her electronic healthcare record is being attempted or is taking place.” (Br.
22.) Similarly, with regard to independent claim 61, Appellant argues the
claim is directed to an “apparatus or machine which provides an inventive, a
novel, and a non-obvious, electronic healthcare record” that can provide
notification as recited in claim 41 (Br. 31.) Appellant makes similar
assertions as to independent claims 81 and 82. (Br. 40-41, 49—50.)
Appellant emphasizes the problems that the claimed invention purportedly
solves—namely, a patient’s healthcare record being “incomplete, outdated,
and/or . . . not readily made available” and “problems associated with the
mistaken, unauthorized, or even fraudulent, access to” information in a
patient’s healthcare record. (Id. at 23, 32, 41, 50-51.)
We are not persuaded of error. The Examiner concludes, and we
agree, each independent claim is directed to “the abstract idea of sending a
message,” which the Examiner finds “has been determined to be a method of
organizing human activities.” (Ans. 2.) The claims are similar in that regard
to those found to be directed to an abstract idea in EasyWeb Innov., LLC v.
Twitter, Inc., No. 2016-2066, 2017 WL 1969492 *2 (Fed. Cir. May 12,
2017) (nonprecedential). There, the claims were purportedly directed to a
message publishing system. In affirming the district court’s determination
that the claims were patent-ineligible under § 101, the Federal Circuit
concluded the claims merely recited “familiar concepts of receiving,
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authenticating, and publishing data.” Id. The Federal Circuit further
concluded the claims “unlike the claims found non-abstract in prior cases,
use[] generic computer technology to perform data collection, analysis, and
publication and do[] not recite an improvement to a particular computer
technology.” Id. Similar reasoning applies to the claims at issue here.
Because we agree with the Examiner, at step one of the analysis, that
the claims are directed to an abstract idea, we turn to the second step of the
analysis, in which we must determine whether the additional elements of the
claims transform them into patent-eligible subject matter. Appellant argues
that the claims are directed to “a practical application, or a special
application, of the identified abstract idea, and not to the identified abstract
idea itself.” (Br. 26—27 (claim 41); see also Br. 34—35 (claim 61), Br. 44^45
(claim 81), Br. 53—54(claim 82).) We note, however, the Supreme Court has
rejected the notion that implementing] a principle in some specific
fashion’ will ‘automatically fal[l] within the patentable subject matter of
§ 101.”’ Alice, 134 S. Ct. at 2358 (alterations in original) (citation omitted).
Here, the Examiner finds as to each of the pending claims, and we agree:
The claim does not include additional elements that are sufficient
to amount to significantly more than the judicial exception
because the computer as recited is a generic computer component
that performs functions (i.e., processing information, generating
a message, transmitting a message). These are generic computer
functions (i.e., processing information, generating a message,
transmitting a message) that are well-understood, routine, and
conventional activities previously known to the industry. The
claim also recites a transmitter and a communication device,
which do not add meaningful limitations to the idea of sending a
message beyond generally linking the system to a particular
technological environment, that is, implementation via
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computers. The claims do not amount to significantly more than
the underlying abstract idea of sending a message.
(Ans. 2—3; see also Final Act. 2—3.) The Examiner makes similar
conclusions as to independent claims 61, 81, and 82. (Ans. 4—6.) In
addition, we find Appellant’s Specification describes conventional computer
hardware for implementing the above described functions including “a
central processing computer or central processing computer system which
can be a network or server computer.” (Spec. 4:20—21).) We, therefore, are
not persuaded the Examiner erred in concluding the claims “do[] not recite
additional elements that amount to significantly more than the abstract idea.”
(Ans. 3; see also Ans. 4—7.)
Finally, we are not persuaded of Examiner error by Appellant’s
argument that the “the issuance of a patent for Claim 41 would not preempt,
or monopolize, the identified abstract idea or the field of the identified
abstract idea.” (Br. 28.) Appellant makes similar arguments for
independent claims 61, 81, and 82. (Br. 37, 46, 55.) We agree the Supreme
Court has described “the concern that drives this exclusionary principle [i.e.,
the exclusion of abstract ideas from patent eligible subject matter] as one of
pre-emption.” Alice, 134 S. Ct. at 2354. But characterizing pre-emption as
a driving concern for patent eligibility is not the same as characterizing
preemption as the sole test for patent eligibility. As our reviewing court has
explained, “[t]he Supreme Court has made clear that the principle of
preemption is the basis for the judicial exceptions to patentability” and “[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, 134 S. Ct. at 2354). And although
“preemption may signal patent ineligible subject matter, the absence of
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complete preemption does not demonstrate patent eligibility.” Id.
Moreover, “[wjhere a patent’s claims are deemed only to disclose patent
ineligible subject matter under the [Alice/Mayo] framework . . . , preemption
concerns are fully addressed and made moot.” Id.', see also OIP Techs., Inc.
v. Amazon.com, Inc., 788 F.3d 1359, 1362—63 (Fed. Cir. 2015), cert, denied,
136 S. Ct. 701 (2015)(“[T]hat the claims do not preempt all price
optimization or may be limited to price optimization in the ecommerce
setting do not make them any less abstract.”).
For the foregoing reasons, we are not persuaded the Examiner erred in
rejecting independent claims 41, 61, 81, or 82 under 35U.S.C. § 101, and
we therefore, sustain the Examiner’s rejection of those claims, along with
the rejection of dependent claims 42—60, 62—80, and 83—90, which Appellant
does not argue separately.
DECISION
For the above reasons, the Examiner’s rejection of claims 41—90 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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