Ex Parte MalecDownload PDFPatent Trial and Appeal BoardJan 23, 201812715633 (P.T.A.B. Jan. 23, 2018) Copy Citation 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. 12/715,633 03/02/2010 Arien Malec 10839-003US1 9165 96039 7590 01/25/2018 Mennier Parlin Rr Piirfman T T C EXAMINER 999 Peachtree Street NE NGUYEN, HIEP VAN Suite 1300 Atlanta, GA 30309 ART UNIT PAPER NUMBER 3686 NOTIFICATION DATE DELIVERY MODE 01/25/2018 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): docketing@mcciplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ARIEN MALEC Appeal 2016-001828 Application 12/715,6331 Technology Center 3600 Before BRUCE T. WIEDER, BRADLEY B. BAYAT, and MATTHEW S. MEYERS, Administrative Patent Judges. WIEDER, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35U.S.C. § 134 from the Examiner’s final rejection of claims 1—3, 5—10, 12—16, and 18—20. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 According to Appellant, the real party in interest is MCKESSEN FINANCIAL HOLDINGS. (Appeal Br. 1.) Appeal 2016-001828 Application 12/715,633 CLAIMED SUBJECT MATTER Appellant’s claimed invention relates “to a mechanism by which care planning activities may be managed across a plurality of separate healthcare related entities.” (Spec. 11.) Claims 1, 8, and 14 are the independent claims on appeal. Claim 1 is illustrative. It recites (some paragraphing added): 1. A method for providing distributed care plan management comprising: receiving, via a service platform comprising one or more memory storage areas and processing circuitry, information associated with a care plan item for a patient, the information being received from a health system entity among a plurality of health system entities with which the service platform is capable of communicating; storing, via the service platform, the information in association with a care plan of the patient; and providing, via the service platform, delivery of at least a portion of the information to a different entity selected from the group consisting of a patient, a care provider, and a care manager, wherein (a) the at least a portion of the information is provided for rendering a different view of the at least a portion of the information based on the identity of the different entity being provided the at least a portion of the information, the different view selected from (i) a patient centered data view based on the identity of the different entity being a patient, (ii) a care provider centered data view based on the identity of the different entity being a care provider, and (iii) a care manager centered data view based on the identity of the different entity being a care manager, and (b) rendering the different view comprises utilizing 2 Appeal 2016-001828 Application 12/715,633 (i) a view selection algorithm to select view parameters based on the identity of the different entity being provided the at least a portion of the information or (ii) a view template to provide the different view based on the identity of the different entity being provided the at least a portion of the information. REJECTIONS Claims 1—3, 5—10, 12—16, and 18—20 are rejected under 35 U.S.C. § 101 as directed to non-statutory subject matter. Claims 1—3, 5—10, 12—16, and 18—202 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Akhtar (US 2007/0162295 Al, pub. July 12, 2007), Comite (US 2002/0194022 Al, pub. Dec. 19, 2002), and Lipscher (US 8,301,462 B2, iss. Oct. 30, 2012). ANALYSIS The §101 rejection In 2014, the Supreme Court decided Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014). Alice applies a two-step framework, earlier set out in Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012), “for distinguishing patents that claim laws of nature, natural 2 The Final Action states that “[cjlaims 1—3, 5—10, 12—16, and 18—20 are rejected under pre-AIA 35 U.S.C. 103(a).” (Final Action 4.) We note, however, that there is no discussion of the reason for the rejection of claim 20 under § 103(a). (See id. at 4—8.) For the reasons discussed herein, we consider this harmless error. 3 Appeal 2016-001828 Application 12/715,633 phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts.” Alice, 134 S. Ct. at 2355. Under the two-step framework, it must first be determined if “the claims at issue are directed to a patent-ineligible concept.” Id. If the claims are determined to be directed to a patent-ineligible concept, then the second step of the framework is applied to determine if “the elements of the claim . . . contain[] an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-eligible application.” Id. at 2357 (citing Mayo, 566 U.S. at 72-73, 79). With regard to step one of the Alice framework, the Examiner determines that the claims are directed to the abstract idea of providing delivery of a portion of information to a different entity selected from a group of a patient, care provider, care manager; and rendering the different view comprising utilizing a view selection algorithm, a view template to provide different view, rendering the different view by utilizing a view selection algorithm to select view parameters and a view template to provide different view. (Answer 12.) Appellant disagrees and argues that the claims “are directed to rendering different views of medical information using view parameters or view templates,” and that the claims “recite some form of receiving information,” “some form of storing information,” and “some form of providing delivery of at least a portion of the information.” (Appeal Br. 19.) In short, Appellant argues that the claims are directed to receiving, storing, and displaying information. “The focus of the asserted claims ... is on collecting information, . . . and displaying certain results of the collection.” Electric Power Grp., LLC 4 Appeal 2016-001828 Application 12/715,633 v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). “Accordingly, 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.” Id. Additionally, “merely presenting the results of abstract processes of collecting and analyzing information, without more (such as identifying a particular tool for presentation), is abstract as an ancillary part of such collection and analysis.” Id. at 1354. We do not find the claimed generic “view selection algorithm” or “view template” to be such a “particular tool for presentation.” Thus, we are not persuaded that the Examiner erred in determining that the claims are directed to an abstract idea. Step two of the Alice framework has been described “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.’” Alice, 134 S. Ct. at 2355 (citing Mayo, 566 U.S. at 72—73). The introduction of a computer or processor into the claim does not alter the analysis at step two. [T]he mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention. Stating an abstract idea “while adding the words ‘apply if ” is not enough for patent eligibility. Nor is limiting the use of an abstract idea “ ‘to a particular technological environment.’ ” Stating an abstract idea while adding the words “apply it with a computer” simply combines those two steps, with the same deficient result. Thus, if a patent’s recitation of a computer amounts to a mere instruction to “implemen[t]” an abstract idea “on ... a computer,” that addition cannot impart patent eligibility. This conclusion accords with the preemption concern 5 Appeal 2016-001828 Application 12/715,633 that undergirds our §101 jurisprudence. Given the ubiquity of computers, wholly generic computer implementation is not generally the sort of “additional featur[e]” that provides any “practical assurance that the process is more than a drafting effort designed to monopolize the [abstract idea] itself.” Id. at 2358 (citations omitted). “[T]he relevant question is whether the claims here do more than simply instruct the practitioner to implement the abstract idea ... on a generic computer.” Id. at 2359. They do not. Appellant argues that the invention provides “a technical solution that overcomes a technical problem for rendering different views of medical information using view parameters or view templates to render the views of medical information from a centralized information store . . . .” (Appeal Br. 21.) Specifically Appellant seeks to analogize the present claims to those in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014). (Appeal Br. 26—27.) But unlike the claims here, the claims in DDR Holdings “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.’ '’ DDR Holdings, 773 F.3d at 1258 (emphasis added). In other words, the invention claimed in DDR Holdings does more than “simply instruct the practitioner to implement the abstract idea with routine, conventional activity.” See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014); see also DDR Holdings, 773 F.3d at 1259. Here, taking the claim elements separately, the function performed by the processor at each step is purely conventional. Receiving, storing, and displaying information are basic computer functions. Moreover, the 6 Appeal 2016-001828 Application 12/715,633 Specification discloses that the invention can be implemented using generic computer components. (See, e.g., Spec. 119—21.) In short, each step does no more than require a generic processor to perform generic processing functions. Considered as an ordered combination, the processing components of Appellant’s method add nothing that is not already present when the steps are considered separately. The claims do not, for example, purport to improve the functioning of the processor itself. Nor do they effect an improvement in any other technology or technical field. Instead, the claims at issue amount to nothing significantly more than an instruction to apply the abstract idea using some unspecified, generic processing circuitry. That is not enough to transform an abstract idea into a patent-eligible invention. See Alice, 134 S. Ct. at 2360. Appellant also argues that the claims “do not preempt every application of an idea and provide a specific way to solve the problem that specifically arises in the realm of computer technology.” (Appeal Br. 27.) Preemption, however, is not a separate test. To be clear, the proper focus is not preemption per se, for some measure of preemption is intrinsic in the statutory right granted with every patent to exclude competitors, for a limited time, from practicing the claimed invention. See 35 U.S.C. § 154. Rather, the animating concern is that claims should not be coextensive with a natural law, natural phenomenon, or abstract idea; a patent-eligible claim must include one or more substantive limitations that, in the words of the Supreme Court, add “significantly more” to the basic principle, with the result that the claim covers significantly less. See Mayo 132 S. Ct. at 1294 [566 U.S. at 72-73], 7 Appeal 2016-001828 Application 12/715,633 CLS Bank Inti v. Alice Corp. Pty. Ltd., 717 F.3d 1269, 1281 (Fed. Cir. 2013) (Lourie, J., concurring), affd, 134 S. Ct. 2347 (2014). Moreover, “[w]here a patent’s claims are deemed only to disclose patent ineligible subject matter under the Mayo framework, as they are in this case, preemption concerns are fully addressed and made moot.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). In other words, “preemption may signal patent ineligible subject matter, [but] the absence of complete preemption does not demonstrate patent eligibility.” Id. In view of the above, we are not persuaded that the Examiner erred in rejecting claim 1 under § 101. Claims 2, 3, 5—10, 12—16, and 18—20 are not separately argued. Therefore, claims 2, 3, 5—10, 12—16, and 18—20 fall with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv). The § 103(a) rejection In rejecting independent claims 1,8, and 14, the Examiner finds that Lipscher discloses (b) rendering the different view comprises utilizing (i) a view selection algorithm to select view parameters based on the identity of the different entity being provided the at least a portion of the information or (ii) a view template to provide the different view based on the identity of the different entity being provided the at least a portion of the information ('462; Col. 5, lines 5—16, lines 31—38; Col. 6, lines 20—31; lines 39—59). (Final Action 6.) Appellant disagrees and argues that “Lipscher is directed to displaying different patient information based on the patient and disease management algorithm for the patient,” whereas the claimed invention selects information 8 Appeal 2016-001828 Application 12/715,633 to be displayed “based on the identity of the different entity being provided the at least a portion of the information.” (Appeal Br. 15—16.) Lipscher discloses a disease management advisor system. The disease management advisor system 402 receives one or more disease management algorithms .... The disease management advisor system transmits the one or more disease management algorithms across the network to one or more health care practitioner systems .... The health care practitioner system 404 receives medical inputs including a directive to select a patient. The health care practitioner system displays medical data, the contents of which depend upon both the patient selected and at least one of the disease management algorithms received. (Lipscher, col. 5,11. 5—16, emphasis added.) Therefore, we agree with Appellant that Lipscher discloses displaying medical data based on the patient selected and at least one of the received disease management algorithms, rather than based on the identity of the entity being provided the information. We are persuaded that the Examiner erred in rejecting independent claims 1, 8, and 14 under § 103. The Examiner does not rely on the other cited art to cure this deficiency. Therefore, we reverse the rejection of independent claims 1, 8, and 14, as well as dependent claims 2, 3, 5—7, 9, 10, 12, 13, 15, 16, and 18—20 under § 103. DECISION The Examiner’s rejection of claims 1—3, 5—10, 12—16, and 18—20 under 35 U.S.C. § 101 is affirmed. The Examiner’s rejection of claims 1—3, 5—10, 12—16, and 18—20 under 35 U.S.C. § 103(a) is reversed. 9 Appeal 2016-001828 Application 12/715,633 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 10 Copy with citationCopy as parenthetical citation