Ex Parte Mun et al

Patent Trial and Appeal Board

Aug 8, 2018

14016650 (P.T.A.B. Aug. 8, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/016,650 09/03/2013
94884 7590 08/10/2018
James M Smedley LLC
776 Mountain Blvd. STE 105
Watchung, NJ 07069
FIRST NAMED INVENTOR
Johnathan Mun
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.
13010-41 7055
EXAMINER
TOMASZEWSKI, MICHAEL
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
08/10/2018 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):
info@sigmalawgroup.com
melena.sanchez@sigmalawgroup.com
alex.korona@sigmalawgroup.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHNATHAN MUN and THOMAS MICHAEL SCHMIDT
Appeal2017-005569
Application 14/016,650 1
Technology Center 3600
Before WILLIAM V. SAINDON, BRUCE T. WIEDER, and
TARA L. HUTCHINGS, Administrative Patent Judges.
WIEDER, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner's rejection of claims 1-16. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
Appellants' invention relates to "provid[ing] real health-care decision
analysis, risk analysis, and option analytics to individual participants."
1 According to Appellants, the real party in interest is Johnathan Mun.
(Appeal Br. 3.)
Appeal2017-005569
Application 14/016,650
(Spec. 1, 11. 5-6.) In other words, Appellants' invention relates to
"providing a process for healthcare plan selection." (Id. at 3, 11. 20-21.)
Claims 1, 11, and 16 are the independent claims on appeal. Claim 11
is illustrative. It recites:
11. A system for providing selectable healthcare plans
compnsmg:
a processor;
a memory coupled to said processor, the memory having
processor executable instructions stored therein, the processor
executable instructions comprising:
a business logic module, a data access module, and a
presentation module;
wherein said presentation module is configured to
generate a user interface comprising a row of
selectable tabs, drop-down lists, and an options
matrix comprising four quadrants arranged in two
rows; wherein each quadrant displays one or more
of a selectable healthcare option;
present to a healthcare consumer via said user
interface a dynamic set of questions, wherein said
questions are iterative so that the answer to one
question pivots to create and present to said
healthcare consumer a different set of questions;
wherein said healthcare consumer's responses to
said questions are sent to said business logic module for
processmg;
wherein said data access module is configured to provide
access to said healthcare consumer's data and any other data
required to run said simulation;
wherein said business logic module is configured to
obtain demographic data for a healthcare consumer,
obtain said healthcare consumer's health profile
data,
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obtain one or more healthcare preferences of said
healthcare consumer,
determine whether said healthcare consumer is
eligible for a premium tax credit and calculate said
premium tax credit,
determine whether said healthcare consumer is
eligible for a cost sharing reduction and calculate said cost
sharing reduction,
wherein said presentation module prompts said
healthcare consumer to select a confidence level;
wherein said business logic module performs a
claim simulation that predicts said healthcare consumer's
claims over a period of time;
wherein said business logic module compiles said
healthcare consumer's healthcare plan input parameters
based on one or more of said demographic data, said health
profile data, said healthcare preferences, said tax credit,
said cost sharing reduction, said confidence level, and said
predicted claims;
wherein said business logic module is further
configured to:
( 1) initialize an actuarial value simulation based on
said healthcare plan input parameters; wherein said
actuarial value simulation is populated with actuarial plans
from a list comprising platinum, gold, silver, and bronze
plans; wherein the actuarial value of each plan is 90%,
80%, 70%, and 60% respectively;
wherein said business logic module performs
an actuarial value simulation and calculates the plan
details for each of said actuarial plans, said details
comprising: the total annual premium, and the total
net cost for each of zero, median, average,
minimum, and maximum predicted claims; and
further applies said tax credits and cost sharing
reductions;
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wherein said presentation module displays
said actuarial value simulation results for each
actuarial plan in a different quadrant of said options
matrix; and
(2) initialize an individual custom model simulation
based on said healthcare plan input parameters; wherein
said custom model is populated by plans matching a set of
custom criteria comprising carrier names, plan names,
plan levels, market rates, and plan design; wherein said
custom module simulation further incorporates user-
entered values corresponding to expected claims, tax rate,
constraints value, and desired confidence levels;
wherein said custom model simulation
performs a simulation for each of said one or more
plans based on said healthcare plan input
parameters and said constraints, and calculates the
expected claims for each plan within said
confidence level;
wherein said plans are ranked by expected
claims value and presented to said healthcare
consumer as a list of selectable healthcare options.
REJECTION
Claims 1-16 are rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more.
ANALYSIS
"Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title." 35 U.S.C. § 101. Section 101, however,
"'contains an important implicit exception: Laws of nature, natural
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phenomena, and abstract ideas are not patentable."' Alice Corp. Pty. Ltd. v.
CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quoting Assoc.for Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
Alice applies a two-step framework, earlier set out in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66
(2012), "for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts." Alice, 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, e.g., an abstract
idea, 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
independent claims 1, 11 and 16 are directed to [ the abstract idea
ofJ generating a user interface including a matrix with selectable
healthcare options, presenting a set of questions, obtaining
healthcare consumer data, determining whether said healthcare
consumer is eligible for a premium tax credit, calculating said
premium tax credit, determining whether said healthcare
consumer is eligible for a cost sharing reduction, calculating said
cost sharing reduction, prompting said healthcare consumer's
healthcare plan input parameters, providing the healthcare
consumer the options of (1) selecting and initializing an actuarial
value simulation and presenting results to consumer, and (2)
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selecting an [sic] initializing an individual custom model
simulation that ranks and presents plans to consumer.
(Non-Final Action 2-3.)
Appellants argue that "[a]pplying step one of the two-part Mayo/Alice
analysis there is no question that the claims do not recite a mathematical
algorithm, fundamental economic principle, or longstanding commercial
practice. Accordingly, Applicant respectfully asserts that the claims are not
directed to an abstract idea." ( Appeal Br. 7.)
Under step one of the Alice framework, we "look at the 'focus of the
claimed advance over the prior art' to determine if the claim's 'character as a
whole' is directed to excluded subject matter." Affinity Labs of Texas, LLC
v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)).
The Specification provides evidence as to what the claimed invention
is directed. In this case, the Specification discloses that Appellants'
invention relates to "providing a process for healthcare plan selection."
(Spec. 3, 11. 20-21.) Claim 11 provides further evidence. Claim 11 recites
"[a] system for providing ... healthcare plans comprising: a processor," "a
memory," "a business logic module, a data access module, and a
presentation module," "said presentation module ... configured to generate
a user interface ... [and] present to a healthcare consumer ... a dynamic set
of questions," "said data module ... configured to provide access to ...
data," "said business logic module ... configured to obtain ... data,"
"obtain preferences of said ... consumer," "determine whether said ...
consumer is eligible for a premium tax credit and calculate said ... credit,"
"determine whether said ... consumer is eligible for a cost sharing reduction
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and calculate said ... reduction," "perform[] a claim simulation," "compile[]
said ... consumer's ... plan input parameters," "initialize ... [and]
perform[] an actuarial value simulation," "display[] said actuarial value
simulation results," "and initialize ... [and] perform[ an individual custom
model] simulation," and rank said plans "and present[] to said ...
consumer." Independent claims 1 and 16 recite similar language. In short,
the claims are directed to providing a process for healthcare plan selection.
Although we and the Examiner describe, at different levels of
abstraction, to what the claims are directed, it is recognized that "[a]n
abstract idea can generally be described at different levels of abstraction."
Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016). That
need not and, in this case does not, "impact the patentability analysis." See
id. at 1241.
Here, claim 11 recites performing a claim, actuarial value, and custom
model simulation, i.e., algorithms, as part of the process for selecting a
healthcare plan. Therefore, we do not agree with Appellants that "there is no
question that the claims do not recite a mathematical algorithm." (See
Appeal Br. 7.)
As in Alice, we need not labor to delimit the precise contours of the
"abstract ideas" category in this case. It is enough to recognize that there is
no meaningful distinction in the level of abstraction between the concept of
"providing statistical analysis of investment data" by "selecting certain
information, analyzing it using mathematical techniques, and reporting or
displaying the results of the analysis" in SAP Am., Inc. v. Investpic, LLC,
890 F.3d 1016, 1019, 2021 (Fed. Cir. 2018), and the concept of"providing a
process for healthcare plan selection," at issue here (Spec. 3, 11. 20-21 ).
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Both are squarely within the realm of "abstract ideas" as the Court has used
that term. See Alice, 134 S. Ct. at 2357.
We do not find persuasive Appellants' argument that "[ c ]laim 1
actually recites generating a specialized user interface for statistical
modeling." (Appeal Br. 6.) Although claim 1 recites a user interface "with
particular features," claim 1 does "not claim a particular way of
programming or designing the software to create [ an interface] that [has]
these features, but instead merely claim[s] the resulting system." Apple,
Inc., 842 F.3d at 1241; see also Affinity Labs of Tx., LLC v. Amazon.com
Inc., 838 F.3d 1266, 1268 (Fed. Cir. 2016) (determining a claim "directed to
a network-based media system with a customized user interface" to be
directed to an abstract idea).
We have explained that the "realm of abstract ideas"
includes "collecting information, including when limited to
particular content." Elec. Power Grp., LLC v. Alstom S.A., 830
F.3d 1350, 1353 (Fed. Cir.2016) (collecting cases). We have
also "treated analyzing information by steps people go through
in their minds, or by mathematical algorithms, without more, as
essentially mental processes within the abstract-idea category."
Id. And we have found that "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.
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir.
2016); see also SmartGene, Inc. v. Advanced Biological Labs., S.A.,
555 F. App'x 950, 955 (Fed. Cir. 2014).
In view of the above, we agree with the Examiner that claims 1, 11,
and 16 are directed to an abstract idea.
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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 (quoting Mayo, 566 U.S. at 72-73).
The Examiner determines that "the claims do not include additional
elements that are sufficient to amount to significantly more than the judicial
exception." (Non-Final Action 3.)
Appellants disagree and seek to analogize the present claims to those
in Bascom Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d
1341 (Fed. Cir. 2016). (See Appeal Br. 11-12.) Appellants argue that in
Bascom,
the Court found that the limitations of the claims at issue, taken
individually, recited generic computer components, which were
not inventive by themselves. Id. at 1349-1352. However, the
court found that the ordered combination of these limitations
provided the requisite inventive concept. Similarly, the ordered
combination of limitations in Applicant's claims amount to an
inventive concept of generating and modeling healthcare options
that is customizable to take into account elements that exist in
real-life and are not accounted for by conventional healthcare
plan option methods.
(Id. at 11.)
In Bascom, the court determined that "an inventive concept can be
found in the non-conventional and non-generic arrangement of known,
conventional pieces." Bascom, 827 F.3d at 1350. Specifically, "[t]he
inventive concept described and claimed in the '606 patent is the installation
of a filtering tool at a specific location, remote from the end-users, with
customizable filtering features specific to each end user." Id. at 1350. The
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Federal Circuit determined that "this particular arrangement of elements is a
technical improvement over the prior art ways of filtering." Id. Appellants
do not indicate what element(s) in claim 1 correspond to, e.g., the "filtering
tool at a specific location, remote from the end-users." Therefore, we do not
find this argument persuasive.
Appellants also seek to analogize the present claims to those in
Amdocs (Israel) Limited v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir.
2016). (Reply Br. 3--4.) Specifically, Appellants argue that 'just as in
Amdocs, claim 11 is tied to a specific structure of various components
(business logic module, data access module, presentation module, user
interface with options matrix)." (Id. at 4.)
We disagree. In relevant part, claim 1 of Amdocs recites "computer
code for using the accounting information with which the first network
accounting record is correlated to enhance the first network accounting
record." Amdocs, 841 F.3d at 1299 (emphasis added). In an earlier opinion,
Amdocs (Israel) Limited v. Openet Telecom, Inc., 761 F.3d 1329 (Fed. Cir.
2014) (Amdocs I), the court had "construed 'enhance' as meaning 'to apply a
number of field enhancements in a distributed fashion.' [Amdocs I] at 1340.
We took care to note how the district court explained that '[i]n this context,
"distributed" means that the network usage records are processed close to
their sources before being transmitted to a centralized manager.' [Amdocs I]
at 1338." Amdocs, 841 F.3d at 1300.
In view of the above claim interpretation of the term "enhance," we
do not find Appellants' argument persuasive. Specifically, Appellants do
not explain what limitation( s) in claim 11 correspond to the claim element
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"to enhance the first network accounting record," when the term "enhance"
is properly construed.
Appellants also seek to analogize the present claims to those in
Trading Technologies International, Inc. v. CQG, Inc., 675 F. App'x 1001
(Fed. Cir. 2017). (Reply Br. 4--5.) Appellants argue that "the patents [in
Trading Technologies] described a graphical user interface (GUI) that
displayed market depth in a commodity, including a dynamic display ... and
a static display." (Id.) Appellants further argue that their claimed system
"represents a novel application of statistical tools to heath [sic] plan
evaluation that allows a user to analyze the effects of insurance claims in a
convenient matrix." (Id. at 5.)
Claim 1 in Trading Technologies recites, in part,
displaying the bid and ask display regions in relation to fixed
price levels positioned along the common static price axis such
that when the inside market changes, the price levels along the
common static price axis do not move and at least one of the first
and second indictors moves in the bid or ask display regions
relative to the common static price axis.
Trading Techs., 675 F. App'x at 1003. The Federal Circuit agreed with the
district court's determination that "[t]he claims require a specific, structured
graphical user interface paired with a prescribed functionality directly
related to the graphical user interface's structure that is addressed to and
resolves a specifically identified problem in the prior state of the art." Id.
at 1004. The Federal Circuit agreed with the district court that "the
challenged patents solve problems of prior graphical user interface devices
... in the context of computerized trading[] relating to speed, accuracy and
usability." Id. (internal quotations omitted). "The [district] court found that
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these patents are directed to improvements in existing graphical user
interface devices." Id.
Here, claim 11 recites "generat[ing] a user interface." But Appellants
do not explain what claim elements solve a problem of prior graphical user
interface devices or improve a graphical user interface device. Nor do
Appellants point to anything in the Specification disclosing how the claimed
invention solves a problem relating to, or improves upon, a graphical user
interface device. Therefore, we do not find this argument persuasive.
Appellants also argue that "[ c ]laims 1, 11, and 16 include limitations
indicating that the health care plan modeling process is a computer-
implemented process used in a graphical user interface environment and
added unconventional steps that confine the claim to a particular useful
application" (Appeal Br. 8), and that the claims are "directed to an improved
... system and method of modeling health care options using complex
statistical tools" (Id. at 11 ).
We do not find these arguments persuasive. "[U]nder the Mayo/Alice
framework, a claim directed to a newly discovered law of nature ( or natural
phenomenon or abstract idea) cannot rely on the novelty of that discovery
for the inventive concept necessary for patent eligibility." Genetic Techs.
Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016). Thus, even if
the claimed techniques are "[g]roundbreaking, innovative, or even brilliant,"
that is not enough for patent eligibility. Ass 'n for Molecular Pathology,
569 U.S. at 591.
With regard to Appellants' argument that the claim is confined to a
particular application, we understand this to be an argument rooted in a
concern for preemption, i.e., that the claims are patent-eligible because they
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do not preempt every application of the abstract idea. We do not find this
argument persuasive of error. Preemption 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].
CLS Bankint'l v. Alice Corp. Pty. Ltd., 717 F.3d 1269, 1281 (Fed. Cir.
2013) (Lourie, J., concurring), aff'd, 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.
Appellants also argue that the claims are patentable under Enfzsh, LLC
v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016). (Appeal Br. 9-10.)
Appellants argue that "claims 1, 11, and 16 provide limitations indicating
that the process is a computer-implemented process used in a graphical user
interface environment." (Id. at 10.)
We disagree. Unlike the present claims, the claims in Enfish were
"specifically directed to a self-referential table for a computer database."
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Enfzsh, 822 F.3d at 1337. That is, "the plain focus of the claims [was] on an
improvement to computer functionality itself, not on economic or other tasks
for which a computer is used in its ordinary capacity." Id. at 1336. The
Federal Circuit noted that this was "an improvement of an existing
technology" as evidenced "by the specification's teachings." Id. at 1337. In
other words, unlike the invention sought to be claimed here, the invention
claimed in Enfzsh 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).
Taking the claim elements separately, the function performed by the
processor at each step is purely conventional. Generating an interface to
receive data, receiving data, analyzing data, and presenting the results are
basic, routine, computer functions. See, e.g., FairWarning IP, LLC, 839
F.3d at 1093-94. Additionally, the Specification discloses that the invention
can be implemented using generic computer components. (See, e.g., Spec.
p. 7, 1. 18-p. 8, 1. 7.) In short, each step does no more than require a generic
computer to perform routine computer functions, and "relying on a computer
to perform routine tasks more quickly or more accurately is insufficient to
render a claim patent eligible." OIP Techs., Inc. v. Amazon.com, Inc., 788
F.3d 1359, 1363 (Fed. Cir. 2015).
Considered as an ordered combination, the processor components of
Appellants' 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. Nor do they effect an
improvement in any other technology or technical field. "At best, the claims
describe the automation of the [ abstract idea] through the use of generic-
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computer functions." Id. That is not enough to transform an abstract idea
into a patent-eligible invention. See Alice, 134 S. Ct. at 2360.
DECISION
The Examiner's rejection of claims 1-16 under 35 U.S.C. § 101 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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