Ex Parte Mansour

Patent Trial and Appeal Board

Aug 27, 2018

13621087 (P.T.A.B. Aug. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/621,087 09/15/2012
141363 7590 08/29/2018
LOZA & LOZA, LLP/Allscripts
Peter Zura, Esq.
305 N. Second Avenue #127
Upland, CA 91786-6064
FIRST NAMED INVENTOR
Richard P. Mansour
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.
ALLS-1037CON 2242
EXAMINER
KANAAN, MAROUN P
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
08/29/2018 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@lozaip.com
peter@lozaip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD P. MANSOUR
Appeal2017-002046
Application 13/621,087
Technology Center 3600
Before BRADLEY W. BAUMEISTER, KARA L. SZPONDOWSKI, and
MICHAEL M. BARRY, Administrative Patent Judges.
Opinion for the Board filed by Administrative Patent Judge
MICHAEL M. BARRY.
Opinion Dissenting filed by Administrative Patent Judge
BRADLEY W. BAUMEISTER.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 29--31, 34--40, and 49--58, which are all the pending claims. 2 We
have jurisdiction under 35 U.S.C. § 6(b ).
1 Appellant identifies Allscripts Healthcare Solutions, Inc. as the real party
in interest. App. Br. 3.
2 Claims 32, 33, and 41--48 were pending at the time of the final rejection.
See Final Act. 2. Appellant states in the Appeal Brief (App. Br. 3 (referring
to the substitute Appeal Brief, filed Feb. 11, 2016)) that claims 32, 33, and
Appeal2017-002046
Application 13/621,087
We REVERSE.
Introduction
Appellant describes the invention as relating "to methods and systems
for creating medical documentation regarding a patient." Spec. ,r 4.
Appellant explains the invention as meeting "a long-felt need in the art for a
method for creating medical documentation more quickly than traditional
text-based approaches" by providing a "visual, symbolic approach to
creating documents," which Appellant refers to as "visual charting." Spec.
In visual charting, complex medical concepts are presented on a
user interface display as symbols which are selected by the
physician as part of a medical documentation creation process.
The symbols are, in essence, synonyms for a textual description
of the complex medical concept. By means of selection of
symbols, and in preferred embodiments a sequence of such
symbols, the visual charting method preserves the complexity
and nuance in the content of a medical document that text-based
approaches provide, while substantially reducing the amount of
time it takes the practitioner to create the documentation ....
. . . Visual charting further improves the ability to
efficiently chart on small platforms such as Smart Phones,
Pocket PCs, iPhones, iPads and similar devices. Additionally,
the visual charting methods provides the ability to chart (i.e.,
create documentation) without a keyboard, i.e., without entering
any text at all.
Id. ,I,I 13-14.
41--48 are cancelled. App. Br. 3. In the Answer, the Examiner states that
claims 29-31, 34--40, and 49-58 are subject to a new ground of rejection,
thereby implicitly acknowledging the cancellation of claims 32, 33, and 41-
48. Ans. 2.
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Application 13/621,087
Claim 29 is representative of the claims on appeal:
29. A method of specifying and saving medical
information pertaining to a patient in an electronic medical
record in a medical healthcare computer system in which
patient medical records are stored and updated, comprising the
steps of:
(a) first,
(i) presenting on a touch sensitive display of a
handheld wireless computing device, for view by a user,
a first anatomical image representing at least a portion of
a human body;
(ii) receiving, on the handheld wireless computing
device, first user input corresponding to touching by the
user on the display of a first area of the first anatomical
image representing a selection by the user of a first body
part of the first anatomical image presented on the
display;
(iii) determining, based on the received first user
input corresponding to selection by the user of a first
body part of the first anatomical image, a first set of
pictorial images associated with the selected first body
part that are each symbolic of a different value associated
with the first body part, wherein a combination of
(A) the first body part of the first anatomical
image of the human body selected by the user, and
(B) one of the pictorial images of the first
set of pictorial images symbolic of different values
associated with the body part, uniquely represents
a predefined textual description of medical
information;
(iv) responsive to receiving the first user input,
presenting on the display of the handheld wireless
computing device, for view by the user,
(i) a text descriptor corresponding to the first
body part, and
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Application 13/621,087
(ii) the determined first set of pictorial
images,
(v) receiving, on the handheld wireless computing
device, second user input corresponding to touching by
the user on the display of an area representing a selection
by the user of one of the presented pictorial images in the
first set of pictorial images,
whereby a first predefined textual description of
medical information is specified by the user pertaining to
the patient without typing by the user; and
(b) presenting, on the display of the handheld wireless
computing device, for view by the user, the first predefined
textual description of medical information;
(c) thereafter,
(i) receiving, on the handheld wireless computing
device, third user input corresponding to touching by the
user on the display of a second area of the first
anatomical image representing a selection by the user of
a second body part of the first anatomical image
presented on the display;
(ii) determining, based on the received third user
input corresponding to selection by the user of a second
body part of the first anatomical image, a second set of
pictorial images associated with the selected second body
part that are each symbolic of a different value associated
with the second body part, the second set of pictorial
images being different than the first set of pictorial
images, wherein a combination of
(A) the second body part of the first
anatomical image of the human body selected by
the user, and
(B) one of the pictorial images of the second
set of pictorial images symbolic of different values
associated with the body part,
uniquely represents a predefined textual description of
medical information;
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(iii) responsive to receiving the third user input,
presenting on the display of the handheld wireless
computing device, for view by the user, the determined
second set of pictorial images;
(v) receiving, on the handheld wireless computing
device, user input corresponding to touching by the user
on the display of an area representing a selection by the
user of one of the presented pictorial images in the
second set of pictorial images,
whereby a second predefined textual description of medical
information is specified by the user pertaining to the patient
without typing by the user; and
( d) presenting, on the display of the handheld wireless
computing device, for view by the user, the second predefined
textual description of medical information;
( e) electronically communicating, from the handheld
wireless computing device, to a server in the medical healthcare
computer system in which patient medical records are stored
and updated for storing in association with an electronic
medical record of the patient,
(i) data associated with the first and second user
input as a first key-value pair corresponding to the first
predefined textual description, and
(ii) data associated with the second and third user
input as a second key-value pair corresponding to the
second predefined textual description.
App. Br. 25-28 (Claims App'x) (formatting adjusted).
The 35 USC§ 101 Rejections
All pending claims stand rejected under 3 5 U.S. C. § 1 01 as "directed
to non-statutory subject matter because the claim(s) as a whole, considering
all claim elements both individually and in combination, do not amount to
significantly more than an abstract idea" (see Final Act. 2) and "because the
claimed invention is directed to a judicial exception (i.e., a law of nature, a
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natural phenomenon, or an abstract idea) without significantly more" (see
Ans. 2-7 (issuing a New Grounds of Rejection (NGR) under§ 101 for all
pending claims while maintaining the rejection from the Final Action)).
Specifically, in the Final Office Action, the Examiner determines all
pending claims are "directed to the abstract idea of saving medical
information," without reciting other meaningful limitations. Final Act. 2
( emphasis omitted). In the NGR, the Examiner further determines the
claims
are directed to the abstract idea of presenting options to a
physician based on entered data, in order to accomplish
specifying and saving steps ... [ and] do not include additional
elements that are sufficient to amount to significantly more than
the judicial exception because the additional computer
elements, which are recited at a high level of generality, provide
conventional computer functions that do not add meaningful
limits to practicing the abstract idea.
Ans. 2.
ANALYSIS 3,4
We use a two-step framework for determining whether claimed
subject matter is judicially excepted from patent eligibility under 35 U.S.C.
§ 101. In the first step, we "determine whether the claims at issue are
directed to a patent-ineligible concept." Alice, 134 S. Ct. at 2355. If so, then
3 Appellant argues all claims based on claim 29. See App. Br. 15, 22-23.
Our analysis, accordingly, focuses on claim 29.
4 In the Reply Brief, Appellant makes an argument based on Alexander
Murray v. The Schooner Charming Betsy, 6 U.S. 64 (1804). Reply Br. 6-9
(referring to "the Charming Betsy [canon] of statutory construction"). Our
decision is based on the relevant law as set forth in Alice Corp. Pty. Ltd. v.
CLS Bank International, 134 S. Ct. 2347 (2014), and related cases; we
decline to opine on Appellant's Charming Betsy argument.
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Application 13/621,087
in the second step, we "consider the elements of each 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. at 2355 (quoting Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 78-79 (2012)).
Alice Step One
Appellant challenges the Examiner's determination in the Final
Rejection that claim 29 is "directed to the abstract idea of saving medical
information" (Final Act. 2) (emphasis omitted). App. Br. 21-22. Appellant
does not challenge the Examiner's determination in the NGR in the Answer
that claim 29 is "directed to the abstract idea of presenting options to a
physician based on entered data, in order to accomplish specifying and
saving steps" (Ans. 2). Reply Br. 2---6. For the first step of the Alice
analysis, we agree with the Examiner's uncontested determination in the
NGR of the abstract idea to which claim 29 is directed.
Alice Step Two
In the Final Rejection, the entirety of the Examiner's analysis under
Alice's second prong is:
The claims do not include additional elements that are sufficient
to amount to significantly more than the judicial exception
because the additional element( s) or combination of element( s)
in the claim(s) in conjunction with the abstract idea per se
amount( s) to no more than mere instructions to implement the
idea on a computer, and/or the recitation of generic computer
structure that serves to perform generic computer functions that
are well-understood, routine, and conventional activities
previously known to the pertinent industry.
Final Act. 3.
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Appellant argues "that this determination was not made based on any
evidence." App. Br. 19; see also id. at 17-18 (contending claim 29 recites
specific meaningful limitations beyond the identified abstract idea).
In the Answer's NGR, the Examiner determines "[t]he claim(s) do not
include additional elements that are sufficient to amount to significantly
more than the judicial exception because the additional computer elements,
which are recited at a high level of generality, provide conventional
computer functions that do not add meaningful limits to practicing the
abstract idea." Ans. 2. The Examiner characterizes functionality recited in
claim 29 as analogous to that in Cybeifone5 and SmartGene. 6 Ans. 3. The
Examiner also cites to Appellant's Specification statements that the
invention (a) can be implemented "using a computing device (for example, a
desktop workstation, smart phone, tablet computer, or the like) having a
display" (Spec. ,r 15) and (b) results in "storing the medical document in a
computer system," such as in a database (Spec. ,r 20) as evidence that
"[g]eneric computer components recited as performing generic computer
functions that are well-understood, routine, and conventional activities
amount to no more than implementing the abstract idea with a computerized
system" and "[ t ]hus, taken alone, the additional elements do not amount to
5 Cyberfone Systems, LLC v. CNN Interactive Group, Inc., 558 F. App'x
988 (Fed. Cir. 2014). Cyberfone supports the proposition that limitations for
simply "using categories to organize, store, and transmit information" are
abstract and do not render an otherwise abstract claim patentable. Id. at 992.
6 SmartGene, Inc. v. Advanced Biological Laboratories, SA, 555 F. App'x
950 (Fed. Cir. 2014). SmartGene supports the proposition that merely
"comparing new and stored information and using rules to identify ...
options" does not save an otherwise abstract claim. Id. at 955.
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significantly more than the above-identified judicial exception (specifying
and saving medical information pertaining to a patient)." Ans. 3--4.
The Examiner further determines that "[l]ooking at the limitations as
an ordered combination adds nothing that is not already present when
looking at the elements taken individually.[7J There is no indication that the
combination of elements improves the functioning of a computer or
improves any other technology." Ans. 4. The Examiner concludes claim 29
"does not amount to significantly more than the underlying abstract idea of
using categories to organize, store, and transmit information as seen in
Cyberfone" because "[t]here is no indication that the combination of
elements improves the functioning of a computer or improves any other
technology" and "[t]heir collective functions merely provide conventional
computer implementation." Ans. 4.
Appellant responds that the Examiner errs in the NGR because
claim 29 recites a combination of limitations that provide unconventional
functionality, which constitutes significantly more than the abstract idea
identified by the Examiner. See Reply Br. 2--4. In contrast with Cyberfone
and SmartGene, Appellant contends the limitations of claim 29 are akin to
those in the claim at issue in BASCOM Global Internet Services, Inc. v.
AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016). Reply Br. 4---6.
We agree with Appellant that the Examiner's analysis fails to provide
a sufficient fact- or evidence-based explanation for how the recited claim
limitations constitute routine instructions to implement the identified
abstract idea on a computer. See Berkheimer v. HP Inc., 881 F.3d 1360,
1368 (Fed. Cir. 2018) ("The question of whether a claim element or
7 The Examiner cites no evidence for this proposition.
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Application 13/621,087
combination of elements is well-understood, routine and conventional to a
skilled artisan in the relevant field is a question of fact."). Regardless of
whether any given individual limitation recited in claim 29 fairly may be
interpreted as a well-understood and conventional activity, as the Federal
Circuit explained in BASCOM, the "inventive concept" inquiry in step two
of the Alice analysis "requires more than recognizing that each claim
element, by itself, was known in the art," and "an inventive concept can be
found in the non-conventional and non-generic arrangement of known,
conventional pieces." BASCOM, 827 F.3d at 1350.
Unlike the broad claim limitations at issue in Cyberfone for
organizing, storing, and transmitting information (see 558 F. App'x at 990)
or those in SmartGene for comparing information and using rules (see 555
F. App'x at 951-52), the method of claim 29 recites a combination of
specific, functionally interrelated user interface limitations that conclude
with transmitting and storing related data as "key-value pairs." Appellant
describes in the Specification a purportedly inventive user interface and
processing system to address identified deficiencies in the prior art for
medical documentation systems. See, e.g., Spec. ,r,r 13-25, 60, 70. The
Examiner provides conclusory analysis that does not address the ostensibly
inventive improvements described in the Specification. See Berkheimer, 881
F.3d at 1369 (explaining that when a specification describes a purportedly
inventive feature, it is necessary to analyze the claims to "determine whether
they capture these improvements").
On this record, we agree with Appellant that the Examiner errs by
failing to provide sufficient support for the determination that claim 29 's
combination of limitations recites only well-known and conventional
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technology under the second prong of Alice. 8 Berkheimer, 881 F.3d at 1368;
BASCOM, 827 F.3d at 1350.
Conclusion
Accordingly, we do not sustain the Examiner's 35 U.S.C. § 101
rejections of claim 29. We, likewise, do not sustain the § 101 rejections of
claims 30, 31, 34--40, and 49--58.
DECISION
For the above reasons, we reverse the 35 U.S.C. § 101 rejections of
claims 29--31, 34--40, and 49--58.
REVERSED
8 We note the sentence to which this footnote applies unambiguously
summarizes our decision. Respectfully, the Dissent mistakenly characterizes
our decision as engaging in de nova fact finding as a basis for reversing the
Examiner. See Dissenting Opinion 7-8. To the contrary, we decline to
engage in the de nova fact-finding necessary to determine whether the
combined (and facially significantly interrelated) limitations of claim 29
amount to significantly more than the abstract idea( s) to which the claim is
directed.
11
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD P. MANSOUR
Appeal2017-002046
Application 13/621,087
Technology Center 3600
Before BRADLEY W. BAUMEISTER, KARA L. SZPONDOWSKI, and
MICHAEL M. BARRY, Administrative Patent Judges.
BAUMEISTER, Administrative Patent Judge, dissenting.
I would affirm the Examiner's determination that the claims are
directed to patent-ineligible subject matter. Appellant presents unpersuasive
arguments to demonstrate that the Examiner's new ground of rejection, as
modified in the Examiner's Answer, was erroneous. And contrary to the
Majority's determination, the Examiner established a prima facie case of
patent ineligibility, which Appellant does not sufficiently rebut.
I.
As noted by the Majority, the Examiner determines that the claims
"are directed to the abstract idea of presenting options to a physician based
on entered data, in order to accomplish specifying and saving steps," and the
Examiner further determines that the claims "do not include additional
elements that are sufficient to amount to significantly more than the judicial
Appeal2017-002046
Application 13/621,087
exception." Ans. 2, cited in Maj. Op. 6. Appellant presents various
arguments in relation to this rejection, but none are persuasive.
Appellant first argues that in spite of being directed to an abstract
idea, claim 29 is not directed to patent-ineligible subject matter because the
claim does not risk monopolizing the concept so as to preclude patent
eligibility. Reply Br. 2--4. This argument is unpersuasive because
preemption is not dispositive of patent eligibility.
To be sure, 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." See Alice Corp., 134 S. Ct.
at 2354. However, characterizing preemption 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: "The 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 Corp., 134 S. Ct. at 2354). Although "preemption may signal
patent ineligible subject matter, the absence of complete preemption does
not demonstrate patent eligibility." Id.
Appellant next argues that
[the] functionality [ recited in claim 29] is not conventional
functionality that can be immediately dismissed. The Examiner
appears to recognize that the claims contain more than
conventional functionality, as the Examiner has withdrawn the
previous Section 103 rejections of the claims and has indicated
the novelty and non-obviousness of the claimed inventions.
Reply Br. 4.
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This argument also is unpersuasive. "The 'novelty' of any element or
steps in a process, or even of the process itself, is of no relevance in
determining whether the subject matter of a claim falls within the § 101
categories of possibly patentable subject matter." Diamond v. Diehr, 450
U.S. 175, 188-89 (1981). A novel and nonobvious claim directed to a
purely abstract idea is, nonetheless, patent-ineligible. See Mayo, 566 U.S.
at 90.
Appellant argues that "even assuming arguendo that claimed
functionality can be implemented utilizing conventional computer
technologies, the functionality [that] is provided can still represent an
inventive concept." Reply Br. 4 (emphasis added). Appellant cites
BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d
1341 (Fed. Cir. 2016) for the proposition that "an inventive concept can be
found in the non-conventional and non-generic arrangement of known,
conventional pieces." Reply Br. 5. Appellant urges that the BASCOM court
held "that the claimed 'specific method of filtering Internet content cannot
be said, as a matter of law, to have been conventional or generic."' Id.
Appellant also cites to additional authority for the proposition "that
significantly more [ than an abstract idea] 'may be found in the non-
conventional and non-generic arrangement of known, conventional
elements."' Id. ( citing, e.g., Memorandum to Patent Examining Corps from
Robert W. Bahr at 3, dated Nov. 2, 2016).
This legal proposition is accurate, but the proposition's veracity is not
persuasive of Examiner error. Appellant does not apply this legal principle
to the present case. That is, Appellant does not present substantive
arguments or evidence as to what particular combination of elements in
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Application 13/621,087
claim 29 allegedly produces a non-conventional and non-generic
arrangement of known, conventional elements. Appellant merely sets forth
the following unsupported conclusion:
Overall, Appellant respectfully submits that it is very
clear that the claims include additional features that ensure that
the claim is not a drafting effort designed to monopolize the
identified abstract idea of "presenting options to a physician
based on entered data, in order to accomplish specifying and
saving steps". Appellant further respectfully submits that, as
the claims pose no risk of pre-empting the abstract idea
identified in the Examiner's Answer, the Examiner has failed to
make out a prima facie case that the claims do not remain
eligible for the monopoly granted under our patent laws.
Id. at 5---6.
In the Appeal Brief, Appellant also argues an additional reason for
why the Examiner erred in determining that claim 29 's additional elements
beyond the abstract idea "amount[] to no more than mere instructions to
implement the idea on a computer, and/or the recitation of generic computer
structure [that] serves to perform generic computer functions that are well-
understood, routine, and conventional activities previously known to the
pertinent industry." App. Br. 19. Specifically, Appellant argues that the
Examiner's "determination was not made based on any evidence, and
instead merely represents the Examiner's opinion." Id.
This argument is unpersuasive because the new ground of rejection set
forth in the Examiner's Answer subsequently cured any purported deficiency
of the original rejection, as presented in the Final Action, thereby mooting
this issue. In the Examiner's Answer, the Examiner finds that Appellant's
Specification affirmatively supports the conclusion that the additionally
recited elements, considered alone and in combination, do not add
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significantly more to claim 29. Specifically, the Examiner cites paragraphs
15 and 20 of Appellant's Specification to support the conclusion that the
claimed elements entail generic computer components and, therefore, "taken
alone, the additional elements do not amount to significantly more than the
identified judicial exception." Ans. 3--4.
The Examiner also addresses the additional elements as an ordered
combination:
Looking at the limitations as an ordered combination adds
nothing that is not already present when looking at the elements
taken individually. There is no indication [in Appellant's
Specification] that the combination of elements improves the
functioning of a computer or improves any other technology.
Their collective functions merely provide conventional
computer implantation.
Id. at 4 ( emphasis added).
That is, the Examiner relies upon the combination of two facts to
reach the conclusion that the additional elements, considered as an ordered
combination, are well-understood, routine, and conventional computer
components that do not add significantly more to the abstract idea: ( 1) each
of the individual elements is conventional; and (2) Appellant's Specification
is silent as to any technological improvement resulting from the components
being arranged in an ordered combination. This combination of findings is
sufficient to satisfy Berkheimer 's requirement that the Office provide a
factual basis to support the legal conclusion that something was well-
understood, routine, and conventional to a skilled artisan at the time the
application was filed. Berkheimer, 881 F.3d at 1369.
The Examiner's findings also are consistent with the Office's
subsequently issued guidance to the Examining Corps on applying
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Berkheimer. "A finding that an element is well-understood, routine, or
conventional cannot be based only on the fact that the specification is silent
with respect to describing such element." US PTO Memorandum "Changes
in Examination Procedure pertaining to Subject Matter Eligibility, Recent
Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.) at 3--4, dated
April 19, 2018 (available at
https://www.uspto.gov/sites/default/files/documents/memo-berkheimer-
20180419.PDF) (emphasis added) ("the Berkheimer memo").
That is, the Berkheimer memo prohibits basing a legal conclusion that
something is well-understood, routine, or conventional solely on a
specification's silence. The Berkheimer memo in no way, though, prohibits
an examiner from using a specification's silence as one of plural facts to
support this legal conclusion.
It should be underscored that an examiner need only establish a prima
facie showing that additional elements, considered alone and as an ordered
combination, were well-understood, routine, and conventional. But such a
prima facie showing is not irrebuttable. An applicant still has the ability to
provide evidence as to why additional elements, as claimed, were not well
known, routine, or conventional, either individually or as an ordered
combination. An examiner then would then have to reconsider all of the
evidence as a whole, including the rebuttal arguments and evidence
presented by the applicant.
In the present case, Appellant provides no persuasive rebuttal
evidence. See generally Reply Br. As such, Appellant has not rebutted the
Examiner's prima facie showing of patent ineligibility.
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The Majority, however, agrees with Appellant's conclusion that
"claim 29 recites a combination of limitations that provide unconventional
functionality, which constitutes significantly more than the abstract idea
identified by the Examiner." Maj. Op. 9 (citing Reply Br. 2--4). More
specifically, the Majority reaches this conclusion by finding, sua sponte,
the method of claim 29 recites a combination of specific,
functionally interrelated user interface limitations that conclude
with transmitting and storing related data as "key-value pairs."
Appellant describes in the Specification a purportedly inventive
user interface and processing system to address identified
deficiencies in the prior art for medical documentation systems.
See, e.g., Spec. ,r,r 13-25, 60, 70. The Examiner provides
conclusory analysis that does not address the ostensibly
inventive improvements described in the Specification.
Maj. Op. 10.
I do not agree with the Majority's approach to addressing the issue.
As a threshold matter, it is not clear what particular combination of
"specific, functionally interrelated user interface limitations" the Majority
relies upon in reaching its conclusion because the Majority omits this detail.
See id. Nor does the Majority sufficiently explain what it is about the
elements' functional interrelationships that causes the claims to recite
significantly more than an abstract idea. Regardless, the mere fact that the
Specification drafter may baldly allege that the system is inventive and that
it addresses identified deficiencies in the prior art is an insufficient basis to
conclude that the invention is, in fact, directed to significantly more than an
abstract idea. The deficiencies alleged by the drafter could just as likely be
deficiencies in the underlying abstract idea.
More importantly, though, Appellant does not argue that the claimed
key-value pairs or any particular combination of the functionally interrelated
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user interface limitations is what constitutes significantly more than the
abstract idea. See App. Br. 21-22; see also Reply Br. 2---6. Appellant does
not point to any of those passages of the Specification that the Majority finds
to disclose inventive improvements. See id. In determining that claim 29
recites significantly more than an abstract idea, the Majority engaged in its
own de nova fact finding and then faulted the Examiner for failing to
provide sufficient evidence that the passages the Majority newly relies upon
were conventional.
Although the Board has the authority to engage in de nova fact finding
on appeal, I would not exercise that authority in the present case. The Board
reviews the appealed rejections for error based upon the issues identified by
Appellants, and in light of the arguments and evidence produced thereon.
See Ex Parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
In my view, the Examiner has established a prima facie case that the
claims are directed to patent ineligible subject matter. And for the reasons
explained above, Appellant does not provide persuasive evidence in the
Reply Brief to rebut the Examiner's findings and conclusions regarding the
additional elements, either individually or as an ordered combination. See
generally Reply Br. Accordingly, I would affirm the Examiner's rejection. 9
9 Like the Majority, I decline to address Appellant's arguments regarding
Charming Betsy and the canons of statutory construction as they relate to
interpreting 35 U.S.C. § 101. The Board does not have the authority to
supplant the Supreme Court's interpretation of§ 101, as expressed in cases
such as Mayo and Alice, with interpretations patent judges potentially may
prefer.
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II.
Should there be further prosecution on the merits, the task of
determining whether the claims recite significantly more than an abstract
idea would be better facilitated by first further defining more precisely what
the underlying abstract idea entails. The following analysis provides such a
definition.
The Examiner finds, and I agree, that the abstract idea to which the
present claims are directed can be characterized broadly as recordkeeping or
"the concept of saving information." See Ans. 3; see also
MPEP § 2106.04(a)(2) Examples of Concepts The Courts Have Identified
As Abstract Ideas-and more specifically, see MPEP § 2106.04(a)(2)(II)(D)
CERTAIN METHODS OF ORGANIZING HUMAN ACTIVITY, methods
that include Concepts relating to tracking or organizing information
( discussing cases where the courts have found activities such as collecting,
organizing, indexing, cataloging, storing, and displaying data to constitute
abstract ideas).
More specifically, the method of independent claim 29 entails a
combination of different recordkeeping activities----e.g., image-assisted
recordkeeping, template-assisted recordkeeping, and index-assisted
recordkeeping. The lack of specificity by which the Examiner characterizes
the present invention is immaterial, though, because the level of abstraction
at which an examiner describes the invention does not change the accuracy
of the examiner's determination. Apple v. Ameranth Inc., 842 F.3d 1229,
1240 (Fed. Cir. 2016) ("An abstract idea can generally be described at
different levels of abstraction.").
Turning to an analysis of the various abstract ideas being claimed, the
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abstract idea of image-assisted recordkeeping corresponds to the claimed
recitation of using anatomical images to represent the body parts of interest
that so that the user can manipulate the image. The courts have found
image-assisted recordkeeping constitutes a patent-ineligible abstract idea.
See Move, Inc. v. Real Estate Alliance Ltd., 221 F. Supp. 3d 1149, 1159
(C.D. Cal. 2016).
In Move, Patent Owner claimed a method for collecting and
organizing information about available real estate properties and displaying
this information on a digital map that can be manipulated by the user. Id. at
1154. In granting summary judgement that the claims were invalid under
35 U.S.C § 101 as being directed to patent-ineligible subject matter (id. at
1165), the court reasoned "if the essential features of the claim can be
implemented within the human mind or with pen and paper, the claim is
directed to an abstract idea." Id. at 1159 (citing CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1372-73 (Fed. Cir. 2011)).
Moreover, it was common practice in the pre-Internet world to
maintain patient records and other paper business documents that included
pictorial visual aids for marking or annotating with a pen. For example,
dentists have long used pens and pencils to mark on paper images of teeth
sets to indicate which teeth were chipped, decayed, filled, or removed.
Orthopedists have long used paper patient questionnaires depicting images
of various human body parts so that patients could circle or check the
particular body parts that were injured or causing pain. Auto-mechanics
have long provided paper forms depicting plan views of cars so that the
customer service representative could use a pen to circle on the picture, for
example, which tire had a nail or slow leak.
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These examples all satisfy the test for abstract ideas under Alice's step
one regardless of whether these practices actually ever were carried out. It
is sufficient for a determination under step one that these acts are capable of
being carried out solely in the mind or with the assistance of pen and paper.
CyberSource, 654 F.3d at 1372-73; Move, 221 F. Supp. 3d at 1159.
Berkheimer 's requirement of providing facts or evidence only relates
to step two of the Alice analysis:
Our decisions in Berkheimer and Aatrix are narrow: to
the extent it is at issue in the case, whether a claim element or
combination is well-understood, routine, and conventional is a
question of fact. This inquiry falls under step two in the § 101
framework, in which we "consider the elements of each 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."
Berkheimer, 890 F.3d at 1374 (Moore, J., concurring) (emphasis added)
( citations omitted).
The abstract idea of template-assisted recordkeeping corresponds, for
example, to claim 29 's recitations of retrieving and displaying predefined
textual descriptions of medical information. Like image-assisted
recordkeeping, using template-assisted recordkeeping also was commonly
practiced prior to the advent of the Internet. For example, librarians have
long transcribed reference information for library patrons by relying upon
pre-printed catalog cards containing bibliography information including,
e.g., authors' names, book titles, and dates of publication. Prior to being
issued computers, patent examiners referenced index cards containing
handwritten templates of commonly relied-upon legal doctrines and case
citations so that the examiners did not need to re-create the wording every
time they set forth a given legal principle in their rejections. Orators have
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long relied upon notecards for delivering the information in the form of
speeches. Telephone users have long relied upon information printed on
Rolodex® index cards for dialing phone numbers. The courts have found
template-assisted recordkeeping constitutes a patent-ineligible abstract idea.
Move, 221 F. Supp. 3d at 1159 ("[I]f the essential features of the claim can
be implemented within the human mind or with pen and paper, the claim is
directed to an abstract idea.").
The abstract idea of index-assisted recordkeeping corresponds to, for
example, claim 29's recitation of "a first set of pictorial images associated
with [a] selected first body part" ( claim limitation ( a )(iii)) and the recitation
that the pictorial images "uniquely represent[] a predefined textual
description of medical information" ( claim limitation (a)(iii)(B)). The courts
have found that using an index or table of contents in recordkeeping
constitutes a patent-ineligible abstract idea. See Intellectual Ventures I LLC
v Erie Indemnity Co., 850 F.3d 1315, 1327 (Fed. Cir. 2017) (holding that
"the claimed creation of an index used to search and retrieve information
stored in a database" constitutes a patent-ineligible abstract idea).
Furthermore, the fact that claim 29 recites the combination of all three
abstract ideas of image-assisted recordkeeping, template-assisted
recordkeeping, and index-assisted recordkeeping does not add "significantly
more" to the abstract nature of claim 29. Setting forth the combination of all
of these abstract ideas just makes claim 29 directed to a more complex
abstract idea. See RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327
(Fed. Cir. 2017) ("Adding one abstract idea ... to another abstract idea ...
does not render the claim non-abstract."); see also FairWarning IP, LLC v.
Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir. 2016) (patent-ineligible
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claims were directed to a combination of abstract ideas). Restated, patent
eligibility is not merely a function of claim length.
13