Ex Parte Joao

Patent Trial and Appeal Board

May 25, 2017

12589294 (P.T.A.B. May. 25, 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.
RJ571 6252
EXAMINER
GILLIGAN, CHRISTOPHER L
ART UNIT PAPER NUMBER
3626
MAIL DATE DELIVERY MODE
12/589,294 10/21/2009
7590 05/25/2017
RAYMOND A. JOAO, ESQ.
122 BELLEVUE PLACE
YONKERS, NY 10703
Raymond Anthony Joao
05/25/2017 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 2016-0020701
Application 12/589,294
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 21—41, which are all of the pending claims.3 We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Application Serial No. 11/978,366 is identified by Appellant as related (Br.
2), and is addressed in co-pending Appeal No. 2016-002062. In addition,
Application Serial No. 11/978,461 is identified by Appellant in co-pending
Appeal No. 2016-003277 as related to both the present appeal as well as
Appeal No. 2016-002062.
2 Appellant identifies the real party in interest as GTJ Ventures, LLC. (Br.
1.)
3 Claims 1—20 have been canceled. (Br. 2.)
Appeal 2016-002070
Application 12/589,294
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 21, 22, and 41 are independent. Claim 21, reproduced below,
is exemplary of the claimed subject matter:
21. An apparatus, comprising:
a receiver, wherein the receiver receives information
regarding an individual, wherein the information regarding an
individual is transmitted from a first computer or from a first
communication device, wherein the first computer or the first
communication device is associated with a healthcare provider,
wherein the information regarding an individual contains
information regarding a symptom, an examination finding, a
diagnosis, a treatment, an administration of a treatment, or a
procedure;
a database or a memory device, wherein the database or
the memory device is associated with the receiver and is located
at a location remote from the first computer or remote from the
first communication device, wherein the database or the memory
device stores information regarding a plurality of individuals, a
plurality of healthcare providers, and at least one healthcare
insurer or healthcare payer, and further wherein the information
regarding a plurality of individuals, a plurality of healthcare
providers, and at least one healthcare insurer or healthcare payer,
includes a healthcare record or a healthcare history of, for, or
associated with, each individual of a plurality of individuals,
including a healthcare record or a healthcare history of, for, or
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Application 12/589,294
associated with, the individual, information regarding a
healthcare practice of, and an insurance accepted by or a payer
from whom payment will be accepted by, each of the plurality of
healthcare providers, including information regarding a
healthcare practice of, and an insurance accepted by or a payer
from whom payment will be accepted by, the healthcare
provider, information for processing or for storing information
regarding a healthcare diagnosis or a healthcare treatment, and
information for submitting an insurance claim or a claim for
payment to a healthcare insurer or a healthcare payer associated
with the individual; and
a processing device, wherein the processing device
processes the information regarding an individual, and further
wherein the processing device processes information for storing
the information regarding an individual in the database or the
memory device or for updating the healthcare record or the
healthcare history of, for, or associated with, the individual, and
further wherein the processing device automatically generates an
insurance claim or a claim for payment in response to the storing
of the information regarding an individual in the database or the
memory device or the updating of the healthcare record or the
healthcare history of, for, or associated with, the individual,
wherein the insurance claim or the claim for payment is suitable
for being automatically submitted to the healthcare insurer or the
healthcare payer associated with the individual or is suitable for
being automatically transmitted to a second computer or to a
second communication device, wherein the second computer or
the second communication device is associated with the
healthcare insurer or the healthcare payer associated with the
individual, and further wherein the processing device transmits
the insurance claim or the claim for payment to the second
computer or to the second communication device, wherein the
apparatus stores information regarding the insurance claim or the
claim for payment in the database or the memory device.
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Appeal 2016-002070
Application 12/589,294
REJECTION
Claims 21—41 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—
4) and (2) the reasons set forth by the Examiner in the Examiner’s Answer in
response to Appellant’s Appeal Brief. (Ans. 2—6.) 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
abstract ideas” are not patentable. See, e.g., Alice Corp. Pty. Ltd. v. CLS
BankInt7, 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
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 12/589,294
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 21—41 under 35 U.S.C. § 101, the Examiner
concludes the claims are directed “the abstract idea of creating and
submitting a claim for payment,” which the Examiner finds is “a
fundamental economic practice and/or a method of organizing human
activities.” (Final Act. 2.) Appellant argues the Examiner’s conclusions and
findings are in error. In particular, with regard to independent claim 21,
Appellant argues the claim is not directed to an abstract idea because it is
“directed to an apparatus or machine which provides an electronic
healthcare record which can provide up-to-date information to and for, any
and/or all of an individuaFs or a patient’s healthcare providers or healthcare
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insurers . . . (Br. 23 (emphasis added).) Similarly, with regard to
independent claims 22 and 41, Appellant argues the claims are not directed
to an abstract idea because they are directed to a “method or process for
using an electronic healthcare record to provide accessible, updatable, and
up-to-date information to and for any and/or all of an individual’s or a
patient’s healthcare providers or healthcare insurers . . . (Br. 32, 40-41
(emphasis added).) Appellant then 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
“inefficiencies and delays associated with billing.” {Id. at 24.)
We are not persuaded of error. The Examiner concludes, and we
agree, each independent claim is “directed to a series of functions that
defme[] an abstract idea similar to using categories to organize, store, and
transmit information and a fundamental economic practice which are
concepts that have previously been found by the courts to be abstract.”
(Ans. 2, 4—5.) In particular, the Examiner concludes, and we agree, claim 21
“is directed to receiving information regarding an individual, storing
information regarding an individual, provider, and payer, arranged according
to various categories, using the stored information or updated information to
generate an insurance claim, and transmitting the insurance claim.” (Id. at
2.) The Examiner further concludes, and we agree, the recited functions
“amount to an abstract idea of using health and insurance-related categories
to organize health and insurance-related information, store information, and
transmit information along with the fundamental economic practice of
creating and submitting an insurance claim.” (Ans. 2—3.)
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The claims presented here are similar in that regard to those found by
the Board, and affirmed by the Federal Circuit, to be directed to the “abstract
idea of billing insurance companies and organizing patient health
information” in In re Salwan, No. 2016-2079, 2017 WL 957239 *3 (Fed.
Cir. Mar. 13, 2017) (nonprecedential). As the Federal Circuit recognized in
Salwan, although the concepts recited in the claims may be “practical
concepts,” they are nevertheless “fundamental economic and conventional
business practices,” and thus are abstract ideas. Id.
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. In that regard,
Appellant argues the claims contain “an inventive concept” and are directed
to “a special application” of the “identified abstract idea.” (E.g., Br. 25, 29.)
As the Examiner notes, and we agree, Appellant merely argues that “the
additional features recited in the claim amount to significantly more than the
abstract idea.” (Ans. 3.) Appellant does not, however, identity any
particular feature, and we are not persuaded that any such feature is recited.
We additionally note 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,
and we agree:
[T]he additional features recited in [claim 21] are not sufficient
to amount to significantly more than the judicial exception
because the additional features amount to no more than generic
computer components that serve to merely link the abstract idea
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to a particular technological environment (i.e. a receiver, a
computer or communication device, a database or memory
device, and a processing device) performing routine and
conventional activities that are well-understood in the health and
insurance industries (i.e. receiving information from a computer
or communication device, storing information in a database or
memory device, arranging information, and transmitting
information).
(Ans. 3; see also Final Act. 2-4.) The Examiner makes similar findings as
to independent claims 22 and 41. (Ans. 4—6.) In addition, as the Examiner
also finds, and we agree, Appellant’s Specification “describes conventional
computer hardware for implementing the above described functions
including ‘a central computer or central processing computer system which
can be a network or server computer.’” {Id. at 3 (citing Spec. 5:1—2).) 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.” {Id. at 3.)
Finally, we are not persuaded of Examiner error by Appellant’s
argument that the “the issuance of a patent for Claim 21 would not preempt,
or monopolize, the identified abstract idea or the field of the identified
abstract idea.” (Br. 29.) Appellant makes similar arguments for
independent claims 22 and 41. (Br. 38, 46-47.) 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
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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
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 21, 22, or 41 under 35U.S.C. § 101, and we
therefore, sustain the Examiner’s rejection of those claims, along with the
rejection of dependent claims 23 40, which Appellant does not argue
separately.
DECISION
For the above reasons, the Examiner’s rejection of claims 21—41 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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