Ex Parte Krempin et al

Patent Trial and Appeal Board

Feb 9, 2017

12367272 (P.T.A.B. Feb. 9, 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.
12/367,272 02/06/2009 David W. Krempin 3086/1870 9527
28533 7590
BGL/Alticor
BRINKS GILSON & LIONE
P.O. BOX 10395
CHICAGO, IL 60610
EXAMINER
BORIN, MICHAEL L
ART UNIT PAPER NUMBER
1631
MAIL DATE DELIVERY MODE
02/10/2017 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 DAVID W. KREMPIN, KENNETH S. KORNMAN,
RUSSELL K. RANDOLPH, and HAERI ROH-SCHMIDT
Appeal 2016-005156
Application 12/367,272
Technology Center 1600
Before DONALD E. ADAMS, TAWEN CHANG,
and JOHN E. SCHNEIDER, Administrative Patent Judges.
ADAMS, Administrative Patent Judge.
DECISION ON APPEAL1
This appeal under 35 U.S.C. § 134(a) involves claims 8—11 and 19-22
(App. Br. 2; Final Act.2 2). Examiner entered rejections under 35 U.S.C.
§ 101 and 35 U.S.C. § 103(a). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
Appellants disclose “a program for regulating health conditions in a
subject through health assessments, personalized interventions, and
1 Appellants identify the real party in interest as “ACCESS BUSINESS
GROUP INTERNATIONAL LLC” (App. Br. 2).
2 Examiner’s Mar. 10, 2015 Final Office Action.
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Application 12/367,272
monitoring health” (Spec. 12). Claim 8 is representative and reproduced
below:
8. A computer implemented method for anonymously
storing and providing a plurality of health information items to
a user, the method comprising:
receiving, by the computer, a plurality of health
information associated with a plurality of individuals;
storing the plurality of health information in a database;
determining a genotype for each of the plurality of
individuals and associating the determined genotype with the
plurality of health information from each of the plurality of
individuals for the genotype;
providing, by the computer, a web portal to a user;
receiving, by the computer via the web portal, a request
from the user for the health information about one of the
genotypes;
displaying the requested health information to the user
via the web portal, the user being unable to identify any of the
plurality of individuals therefrom;
customizing one or more products for the user based on
the health information of that user and the genotype associated
with that user;
displaying a customized analysis via the web portal that
includes the customized one or more products and customized
recommendations; and
providing, via the web portal, a customized progress
tracker that tracks health for the user based on the health
information of the user, the genotype of the user, and the
customized one or more products for the user.
(App. Br. 14.)
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The claims stand rejected as follows:3
Claims 8—11 and 19—22 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Scott,4 Agur,5 and Osborne.6
Claims 8—11 and 19—22 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Snowden7 or Blum8 in combination with Scott, Agur, and
Osborne.
Claims 8—11 and 19-22 stand rejected under 35 U.S.C. § 101, as
directed to non-statutory subject matter.
3 We recognize, and agree with, Appellants’ contention that Examiner’s
“Final Office Action states that the rejection is ‘under 35 U.S.C. [§] 102(e)
as anticipated by Scott’ but given the context in which the rejection is
combined with two other references and this rejection appears under a 103
heading, Applicants infer that [Examiner] meant [this rejection] to be a 103
rejection” (App. Br. 4, n. 1; see Final Act. 2—6; see also id. at 6 (Examiner’s
conclusion of obviousness)). Unlike obviousness under 35 U.S.C. § 103,
anticipation requires a single reference teach Appellants’ claimed invention.
VerdegaalBros., Inc. v. Union Oil Co., 814 F.2d 628, 631 (Fed. Cir. 1987)
(“A claim is anticipated only if each and every element as set forth in the
claim is found, either expressly or inherently described, in a single prior art
reference”). As Appellants make clear, Examiner’s statement of the
rejection is based on a combination of references. Therefore, for clarity, to
the extent that a rejection under 35 U.S.C. § 102(e) is of record, it is
REVERSED and will not be discussed further.
4 Scott, US 2002/0095585 Al, published July 18, 2002.
5 Agur et al., US 2006/0167637 Al, published July 27, 2006.
6 Osborne et al., US 7,062,076 Bl, issued June 13, 2006.
7 Snowden et al., US 2002/0026332 Al, published Feb. 28, 2002.
8 Blum, US 2004/0084895 Al, published May 6, 2004.
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Application 12/367,272
Obviousness:
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 1. Scott “relates to a variety of methods and systems directed to
acquiring, storing, and providing access to genomic profile information,
including, for example, an Internet-accessible personal genomic profile
information collection system having entries for many participants” (Scott
12; see generally Final Act. 3).
FF 2. Scott discloses that “[o]n a general level, the software finds persons
having common traits in the database, and displays a graphical
representation of the persons having common traits. The identities of the
persons can remain anonymous” (Scott 194; see Final Act. 4).
FF 3. Scott’s Figure 7 is reproduced below:
FIG . 7
Scott’s “FIG. 7 is a flowchart showing a method for collecting personal
genomic profile information” (Scott 127; see generally Final Act. 3).
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Application 12/367,272
At 702, a participant is registered. . . . The participant can then
be provided with instructions on how to provide gene profile
information. Participants may provide various combinations of
the information (e.g., some genotype information and some
medical information, but no proteomics information). The
information is combined to form a personal genomic profile,
which can be updated overtime. . . .
At 710, phenotype information is received or edited. For
example, a participant may enter her eye color via an HTML
form.
At 720, proteomics information is received or edited.
Such information can come from a laboratory that has
performed analysis on a biological specimen of the participant.
At 730, genotype information is received or edited. Such
information can come from a laboratory that has performed
analysis on a biological specimen of the participant. . . .
At 740, gene expression information is received or
edited. Such information typically comes from a laboratory
that has performed analysis on a biological specimen of the
participant. . . .
At 750, medical information is received or edited. Such
information may come directly from the participant, from a
medical professional, or from some other source. For example,
a participant may enter information about personal disease
history, family disease history, and other medical treatment and
diagnosis.
(Scott || 83—88; see id. at 11—12 (Scott’s claims 33—51, 55, 56, 70, 80, 81,
and 83—86; see Final Act. 3 4).)
FF 4. Scott exemplifies
a method [] implemented on the Intemet[, wherein] the
participant registers herself in the database via an online form,
such as that presented in an Internet browser. Subsequently, the
participant’s personal genomic profile data is collected[.] The
participant’s data can come directly from the participant as well
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as from other sources, such as a lab analyzing a biological
sample provided by the participant from the participant’s body.
(Scott | 58; see id. 1103; see Final Act. 4.)
FF 5. Scott discloses that “a participant can perform a comparative
analysis that analyzes their own data in light of others and identifies other
individuals with similar genomic or molecular characteristics” (Scott | 60;
see Final Act. 4).
FF 6. Scott discloses a method, wherein
tools are provided to the participant to analyze her genomic
profile. The tools provided in exchange for collecting the data
can vary based on the level of access the participant provides to
her genomic profile. For example, at one level, participants
might be granted access to research and articles relating to their
profile. At another level, in exchange for making an
anonymous version of her personal genomic profile available to
others via the center, the participant can be provided with
comparative analysis tools to compare her personal genomic
profile with those of other participants. Such comparative
analysis tools can include identifying a cluster of other
participants having characteristics similar to those of the
participant.
(Scott 161; see id. 166; id. at 11 (Scott’s Claim 6); see Final Act. 4.)
FF 7. Scott discloses a method, wherein
participants [] contribute their information [] by providing
group information and functions. Groups can be created to
focus on particular characteristics or conditions related to
genomic or molecular profiles. For example, a group can be
designated for members interested in avoiding or treating
illness and diseases . . . [or] age, sex, race, and the like.
Participants can join the group to share information and ideas.
(Scott | 64; see id. 197 (“The center can identify a cluster of participants
closest to a participant and display a graphical representation of the cluster,
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while still preserving the anonymity of the participants”); see Final Act. 3—
4).
FF 8. Scott discloses that
[t]he participant can select one of the biosamples by clicking on
a point, and information about the biosample is presented. For
example, ... the biosample is presented side by side with the
biosample selected. The participant can further investigate the
treatment and medical history of the person associated with the
biosample.”
(Scott 1118; see Final Act. 4.)
FF 9. Scott discloses:
The genomic profile information can include, for example,
genomic pathology information relating genomic data to a
specific biopsy or tissue specimen from a participant. . . . The
genomic profile information can further include therapeutic
information regarding a link between participant and
therapeutic outcome in response to a particular therapy or with
respect to patient interaction with a particular therapy, such as
metabolic, pharmacokinetic, adsorption, desorption, excretion,
toxicity, or side effects to drugs or other response to therapy.
(Scott 179; see Final Act. 3—4.)
FF 10. Scott discloses that “[additional configuration screens may be
presented by which a participant can customize the information presented by
the genomic information center,” such as “usemame[,] password [and]
privacy settings” (Scott 1111; see Final Act. 4).
FF 11. Examiner finds that “Scott does not teach customizing one or more
products for the user based on the health information and providing, via the
web portal, a customized progress tracker that tracks health for the user” and
relies on Agur and Osborne to make up for this deficiency in Scott (Final
Act. 4).
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FF 12. Agur “relates generally to prediction of a progression of healthy and
diseased cells in patients with/without treatment effect incorporated therein,”
wherein Agur discloses “systems, methods and computer program products
for predicting the progression of a biological system, and for prediction and
optimization of treatment of disease,” which “can be used to simulate a
general patient for the use in certain stages in drug development and trials as
well as for an individual patient” (Agur 12; see also id. at 42-45 (Agur
claims 1, 9, 58, and 92); see Final Act. 5).
FF 13. Osborne “relates to electronic genetic analysis systems, and more
particularly, to a computerized artificial intelligence system for acquiring
and processing DNA hybridization patterns and comparing the processed
patterns with databases for clinical or research applications” (Osborne 1: 9—
13; see also id. at 21—23 (Osborne’s claims 3, 5, and 21; see Final Act. 5).
FF 14. Osborne discloses:
A method for diagnosing a physiological condition of an
individual patient and for recommending treatment for said
patient, comprising:
(viii) recommending methods of treatment for the patient based
on the diagnosed physiological condition, patient personal
medical history and clinical observations, and (ix) updating said
stored proteomics parameters and said stored patient medical
history.
(Osborne 23: 19-46 (Osborne’s claim 22); see Final Act. 5.)
FF 15. Snowden “[rjelates to a system and method for creating, maintaining
and automatically updating a consumer-owned and controlled personal
electronic health record,” which “allows consumers to decide how, when
and where their medical information is to be accessed and used, resulting in
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data security becoming an integral part of the process” (Snowden 12; see
also id. 11118 and 123; Final Act. 8).
FF 16. Blum “relates to health insurance. More specifically, [] to systems
for reducing costs, especially for patients who may be away from the typical
provider” (Blum 12; see id. at 3 (Blum’s claim 1); see generally Final Act.
8).
FF 17. Blum discloses that in one embodiment of Blum’s disclosure a
patient’s “medical history [] is stored remotely on a networked database”
(Blum 130; see id. at 4 (Blum’s claims 23 and 25); see Final Act. 8).
FF 18. Examiner finds that “Snowden or Blum do not specifically teach
determining genetic information and providing health information ‘from one
[] genotype[]’” and relies on the combination of Scott, Agur, and Osborne to
make up for this deficiency in Snowden or Blum (Final Act. 9).
ANALYSIS
The combination of Scott, Agur, and Osborne:
Based on the combination of Scott, Agur, and Osborne, Examiner
concludes that, at the time Appellants’ invention was made, it would have
been prima facie obvious “to formulate a ‘customized’ treatment based on
individual’s genetic and health information, and recommendations for
individualized treatment as provided in [the combination of] Scott, A[g]ur
and Osborne, and to monitor the results of such treatment as disclosed in the
references” (Final Act. 6).
We are not persuaded by Appellants’ contention that the combination
of Scott, Agur, and Osborne fails to make obvious a computer implemented
method for anonymously storing and providing a plurality of health
information items to a user, comprising: (1) customizing one or more
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Application 12/367,272
products for the user based on the health information of that user and the
genotype associated with that user and (2) a customized progress tracker that
tracks health for the user based on the health information of the user, the
genotype of the user, and the customized one or more products for the user
(see FF 14; see generally FF 1—14; cf. App. Br. 14 (Appellants’ claim 8);
App. Br. 4—5; Reply Br. 4—5). Appellants failed to provide persuasive
evidence or argument to support a conclusion that the combination of Scott,
Agur, and Osborne fails to suggest “customizing one or more products for
the user based on the health information of that user and the genotype
associated with that user” (see FF 14; see also FF 1—14). In particular, Scott
teaches “an Internet-accessible personal genomic profile information
collection system” (see, e.g., FF1, FF3, FF4); Agur teaches systems and
methods for “predicting the progression of a biological system” and
predicting and optimizing disease treatment for a patient (see FF12); and
Osborne teaches a method of diagnosing and recommending treatment for a
patient comprising recommending treatment based on the patient’s medical
history and updating stored patient information (FF14).
For the foregoing reasons, we are not persuaded by Appellants’
contention that Osborne, when viewed in isolation, does not “recite that the
product is customized based on health information of a user and the
genotype associated with that user’'' or “a customized progress tracker that
tracks health for the user based on the health information of the user, the
genotype of the user, and the customized one or more products for the user,”
which fails to account for the contributions of Scott and Agur to the
combination of Scott, Agur, and Osborne (see App. Br. 8—9; Reply Br. 5; cf.
FF 1-14).
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We are not persuaded by Appellants’ contention that “Scott does not
disclose receiving health information associated with members of the group
and storing their health information in a database based on genotype as
claimed” (App. Br. 8; cf. FF 6; see also FF 7—9). Appellants’ fail to provide
persuasive evidence or argument to support a conclusion that Scott’s storage
of a plurality of health information in a database, differs from the
requirements for the storage of a plurality of health information in a database
that is require by Appellant’s claim 8.
Snowden or Blum in combination with Scott, Agur, and Osborne:
Based on Snowden or Blum in combination with Scott, Agur, and
Osborne, Examiner concludes that, at the time Appellants’ invention was
made, it would have been prima facie obvious to “include[] genetic
information into the health information sharing methods of Snowden [] or
Blum []” as suggested by the combination of Scott, Agur, and Osborne
(Final Act. 9).
Having found no error in Examiner’s combination of Scott, Agur, and
Osborne, we are not persuaded by Appellants’ contention that Snowden
and/or Blum “fail to cure the deficiencies” in the combination of Scott,
Agur, and Osborne (see App. Br. 12; see Reply Br. 5).
CONCLUSION OF LAW
The preponderance of evidence relied upon by Examiner supports a
conclusion of obviousness.
The rejection of claim 8 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Scott, Agur, and Osborne is affirmed. Claims 9—11
and 19—22 are not separately argued and fall with claim 8.
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The rejection of claim 8 under 35 U.S.C. § 103(a) as unpatentable
over Snowden or Blum in combination with Scott, Agur, and Osborne is
affirmed. Claims 9-11 and 19-22 are not separately argued and fall with
claim 8.
Utility:
ISSUE
Does the evidence of record support Examiner’s finding that
Appellants’ claimed invention is directed to non-statutory subject matter?
ANALYSIS
Examiner finds that Appellants’ claimed invention is directed to a
process [that] is a computational method of receiving, storing,
comparing and displaying information. The method includes
the steps of receiving health information [from a] plurality of
individuals, and associated genetic information, anonymously
displaying the information per user’s request, customizing said
information to match information obtained from the user, and
tracking user’s health and genetic information. As such, the
claims are directed to collecting and comparing information,
comparing information to control or target data, storing and
transmit information. This is simply organization and
comparison of data which can be performed mentally and is an
idea of itself.
(Ans. 8.) We are not persuaded.
Examiner’s description of Appellants’ claimed invention fails to
account for the requirement of Appellants’ claimed invention, wherein “one
or more products [are customized] for the user based on the health
information of that user and the genotype associated with that user” (see
App. Br. 14 (Appellants’ claim 8); see also App. Br. 16—17 (Appellants’
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claim 19 (the only other independent claim of record); see also Reply Br. 2
(Examiner “merely recit[ed] [a] few words of a few claim elements”)). Thus,
Examiner’s rejection fails to consider the claims as a whole. See In re
Bilski, 545 F.3d 943, 958 (Fed. Cir. 2008) (“it is inappropriate to determine
the patent-eligibility of a claim as a whole based on whether selected
limitations constitute patent-eligible subject matter”).
Further, notwithstanding Examiner’s contention to the contrary,
Appellants’ claimed invention is not “the mere recitation of ‘computer-
implemented’ [steps] . . . akin to adding the words ‘apply it’ in conjunction
with [an] abstract idea” (Ans. 9).
We recognize that “simply implementing a mathematical principle on
a physical machine, namely a computer, [is] not a patentable application of
that principle.” Mayo Collaborative Services v. Prometheus Laboratories,
Inc., 132 S.Ct. 1289, 1301 (2012). To the contrary, to transform such a
nonpatentable phenomenon, process, or concept into a patent-eligible
application, one must do more than simply state the phenomenon, process,
or concept “while adding the words ‘apply it.’” Id. at 1294.
On this record, however, Appellants’ claimed invention does more
than recite a nonpatentable phenomenon, process, or concept, while simply
stating “apply it” in the context of a machine (see App. Br. 10).
Specifically, Appellants’ claimed invention expressly requires that “one or
more products [is/are customized] for the user based on the health
information of that user and the genotype associated with that user” and “a
customized progress tracker [] tracks health for the user based on the health
information of the user, the genotype of the user, and the customized one or
more products for the user” (see App. Br. 14 (Appellants’ claim 8); see also
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id. at 16-17 (Appellants’ claim 19)). See generally, DDR Holdings, LLCv.
Hotels.com, L.P., 773 F.3d 1245, 1259 (Fed. Cir. 2014) (The claimed
invention “recite[s] a specific way to automate the creation of a composite
web page by an ‘outsource provider’ that incorporates elements from
multiple sources in order to solve a problem faced by websites on the
Internet”); see generally Reply Br. 3^4.
CONCLUSION OF LAW
The evidence of record fails to support Examiner’s finding that
Appellants’ claimed invention lacks patentable utility due to its not being
supported by a specific, substantial, and credible utility or, in the alternative,
a well-established utility. The rejection of claims 8—11 and 19-22 under 35
U.S.C. § 101, as directed to non-statutory subject matter is reversed.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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