Ex Parte NAEYMI-RAD et al

Patent Trial and Appeal Board

Aug 31, 2018

13622934 (P.T.A.B. Aug. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/622,934 09/19/2012
33297 7590 12/22/2017
BEEM PA TENT LAW FIRM
53 W. JACKSON BLVD., SUITE 1352
CHICAGO, IL 60604-3787
FIRST NAMED INVENTOR
FrankNAEYMI-RAD
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.
0214-0017 6818
EXAMINER
TOMASZEWSKI, MICHAEL
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
12/22/2017 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):
uspto@beemlaw.com
patents@beemlaw.com
USPTO@dockettrak.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANK NAEYMI-RAD, REGIS JP CHARLOT,
ALINA E. OGANESOVA, DAVID 0. HAINES, AZIZ M. BODAL,
ANDRE L. YOUNG JR., MASA YO KOBASHI,
STEPHANIE J. SCHAEFER, ANDREW STUART KANTER,
KIM CHARLES MEYERS, and JOSE ANTONIO MALDONADO JR.
Appeal 2016-005478 1
Application 13/622,9342
Technology Center 3600
Before KENNETH G. SCHOPPER, TARA L. HUTCHINGS, and
MATTHEWS. MEYERS, Administrative Patent Judges.
HUTCHINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
1 Our decision references Appellants' Appeal Brief ("App. Br.," filed
Sept. 3, 2015), Reply Brief ("Reply Br.," filed Apr. 26, 2016), and
Specification ("Spec.," US 2013/0080191 Al, pub. Mar. 28, 2013), and the
Examiner's Answer ("Ans.," mailed Feb. 26, 2016), and Final Office Action
("Final Act.," mailed Mar. 13, 2015). The record includes a transcript of the
hearing held September 21, 2017.
2 Appellants identify Intelligent Medical Objects, Inc. as the real party in
interest. App. Br. 1.
Appeal 2016-005478
Application 13/622,934
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-14. An oral hearing was held on September 21, 2017.
We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
CLAIMED INVENTION
Appellants' claimed invention relates to "a system and method for
electronic record-keeping, organizing, and managing." Spec. ,r 2.
Claims 1, 10, and 17 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A method of implementing a controlled vocabulary in a
longitudinal electronic medical record, comprising:
generating a first instance of a plurality of data objects
during a first encounter, said plurality of data objects
comprising data elements further comprising a first instance
identifier and temporal identifiers;
linking a data object in said first instance to a
summarization reference with a pointer, where the plurality of
data objects and the summarization reference are related as part
of a directed graph data structure;
creating an additional instance of a plurality of data
objects during a later encounter, said additional instance of a
plurality of data objects comprising data elements further
comprising an additional instance identifier and temporal
identifier;
providing continuity for said plurality of data objects of
said first instance over time;
capturing said controlled vocabulary using a computer by
forming a list of medical terms and list of associated
descriptions;
creating a list of codes internal to said controlled
vocabulary;
2
Appeal 2016-005478
Application 13/622,934
storing said codes, said medical terms, and said
descriptions using a computer in a format suitable for use in the
longitudinal electronic medical record; and
tagging elements within a domain within the longitudinal
medical record with said controlled vocabulary;
wherein said controlled vocabulary maps to at least one
of a reference terminology or an administrative terminology;
and
wherein said providing step comprises tracking a
relationship between said data object of said first instance and a
data object of said additional instance.
REJECTION
Claims 1-14 are rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter.
ANALYSIS
Independent Claims 1 and 12
We are not persuaded by Appellants' argument that the Examiner
erred in rejecting the claims under 35 U.S.C. § 101, because the Examiner
fails to establish a prima facie rejection under 35 U.S.C. § 101. Reply Br. 1,
3-5; see also App. Br. 10. Here, in rejecting claims 1-14 under§ 101, the
Examiner analyzes the claims using the two-step framework described by
the Supreme Court in Alice Corp. Pty. Ltd., v. CLS Banklnt'l, 134 S. Ct.
2347 (2014). Specifically, the Examiner finds that "claim 1 is drawn to a
method of implementing a controlled vocabulary in a longitudinal electronic
medical record by data objects pertaining to encounters, creating and storing
a vocabulary with associated codes, [ and] tagging a medical record with the
vocabulary," and claim 12 "is drawn to a method of processing a sound
3
Appeal 2016-005478
Application 13/622,934
wave and correlating it with a vocabulary by capturing a sound wave as an
electronic file, translating the file to text, storing the text as a patient medical
record, tagging the record with a vocabulary, mapping the vocabulary to a
reference terminology, and providing a code internal to the vocabulary."
Ans. 3. As such, the Examiner determines that independent claims 1 and 12
"process information to create a longitudinal medical record and thereby
manage patient records." Id. The Examiner characterizes this concept as an
abstract idea because it is similar to other concepts that the courts have held
to be abstract, such as a method of organizing human activities; a
fundamental economic practice; using categories to organize, store, and
transmit information; comparing new and stored information; and/or
comparing data using mathematical relationships/formulas. Id.
The Examiner further finds that the
claims do not include limitations 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
( e.g., a computer, etc.) that serves to perform generic computer
functions ( e.g., generating data, linking data, creating data
objects, etc.) that are well-understood, routine, and
conventional activities previously known to the pertinent
industry.
Final Act. 2.
The Examiner, thus, notified Appellants of the reasons for the
rejection "together with such information and references as may be useful in
judging of the propriety of continuing the prosecution of [the] application."
35 U.S.C. § 132; Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990)
(Section 132 "is violated when a rejection is so uninformative that it
4
Appeal 2016-005478
Application 13/622,934
prevents the applicant from recognizing and seeking to counter the grounds
for rejection."). And we find that, in doing so, the Examiner set forth a
proper rejection under§ 101 such that the burden then shifted to Appellants
to demonstrate that the claims are patent-eligible.
We are not persuaded by Appellants' argument that the Examiner
erred in characterizing claim 1 as being directed to an abstract idea.
Specifically, Appellants charge that the Examiner oversimplifies the claims,
ignores the specific technical details and structure recited in the claims, and
fails to compare the abstract idea to abstract ideas identified by the Supreme
Court or the Federal Circuit. App. Br. 10. For example, with reference to
Figures 9 and 10 of the Specification, Appellants assert that the invention
enables a health care provider to collect certain data elements, such as
follow-up data items, and reuse previously stored items, thereby alleviating
the need to store duplicative data, and increasing the speed and efficiency of
processing records. App. Br. 6-8; see also Reply Br. 2-3. The updated data
items are automatically linked to previous data by pointers. App. Br. 7.
Data items are tagged with source vocabulary using business logic. Id. at 9
( citing Spec., Fig. 3).
Under the "abstract idea" step, we evaluate 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 Tex. LLC v. DIRECTV
LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016). According to Appellants'
Specification, current healthcare patient record structure standards allow the
exchange of information, but do not address "the real need of the actual care
of patients or the proper storage of patient information over time." Spec.
,r 5; see also id. ,r,r 6-11. To address this shortcoming, Appellants' invention
5
Appeal 2016-005478
Application 13/622,934
provides longitudinal electronic record-keeping, organzing and managing.
Id. ,r 33. A longitudinal electronic medical record (LEMR) structure
provides a written medical history of what has happened to a patient since
birth. Id. ,r 35. The LEMR "should automate and streamline the clinician's
workflow." Id. ,r 36. "The LEMR design may include the ability to setup
and collect information pointers directed at other activities within the
LEMR." Id. ,r 40. "The LEMR is a data collection device." Id. ,r 41.
Here, independent claim 1 recites generating a first instance of a
plurality of data objects, linking a data object with a pointer, creating an
additional instance of a plurality of data objects, providing continuity for the
plurality of data objects, capturing controlled vocabulary, creating a list of
codes internal to the controlled vocabulary, storing the code, and tagging
elements of the plurality of data objects with the controlled vocabulary.
Independent claim 12 recites capturing a sound wave as an electronic file,
translating the electronic file into text, storing the text as a patient medical
record, tagging the patient medical record with a source vocabulary,
mapping the source vocabulary to a reference, and providing a code internal
to the source vocabulary.
Thus, the claim language, viewed in light of Appellants'
Specification, supports the Examiner's determination that independent
claims 1 and 12 are directed to processing information to create a
longitudinal medical record, and thereby manage patient records. Stated at a
higher level of abstraction, claims 1 and 12 can be characterized as
collecting, storing, and organizing data. 3 Spec. ,r 3 ( claimed invention "is
3 An abstract idea can generally be described at different levels of
abstraction. Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240--1241
6
Appeal 2016-005478
Application 13/622,934
directed to a system and method for electronic record-keeping, organizing,
and managing").
Yet, our reviewing court has repeatedly held that claims directed to
collecting, storing, and organizing data are patent ineligible. For example, in
In re TL! Commc 'ns, the Federal Circuit concluded that the concept of
classifying data ( an image) and storing it based on its classification is
abstract under step one. In re TL! Commc 'ns LLC Patent Litigation, 823
F.3d 607, 611 (Fed. Cir. 2016). In Content Extraction & Transmission LLC
v. Wells Fargo Bank, Nat'! Assn., the Federal Circuit similarly held that the
concept of data collection, recognition, and storage is abstract. Content
Extraction & Transmission LLC v. Wells Fargo Bank, Nat'! Assn., 776 F.3d
1343, 1347 (Fed. Cir. 2014). And more recently, in Intellectual Ventures I
LLC v. Erie Indemnity Co., the Federal Circuit found that the concept of
organizing and accessing records through the creation of an index-searchable
database "existed well before the advent of computers and the Internet," and
was similar to other concepts held to be abstract, such as collecting data,
recognizing data, storing data, classifying data, and filtering data.
Intellectual Ventures I LLC v. Erie Indemnity Co., 850 F.3d 1315, 1327
(Fed. Cir. 2017) (collecting cases). Likewise, the court determined that the
concept of remotely accessing and retrieving user-specific information from
any device located in a region through a user interface using pointers is
(Fed. Cir. 2016) ("An abstract idea can generally be described at different
levels of abstraction. As the Board has done, the claimed abstract idea could
be described as generating menus on a computer, or generating a second
menu from a first menu and sending the second menu to another location. It
could be described in other ways, including, as indicated in the specification,
taking orders from restaurant customers on a computer.").
7
Appeal 2016-005478
Application 13/622,934
abstract. Id. at 1330. As such, we agree with the Examiner's determination
that claims 1 and 12 recite steps similar to other steps that have been held to
be abstract, such as organizing, storing, and transmiting information.
Turning to step two of the analysis, we are not persuaded by
Appellants' argument that claims 1 and 12 recite additional elements that
amount to significantly more than the abstract idea, because the Examiner
acknowledges that the claims are novel and non-obvious. App. Br. 10-11;
see also Reply Br. 7. Although the second step in the Mayo/Alice
framework is termed a search for an "inventive concept," the analysis is not
an evaluation of novelty or non-obviousness, but rather, a search for "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 Corp., 134 S. Ct. at 2355 (quoting Mayo,
132 S. Ct. at 1294) (alteration in original)). A novel and non-obvious claim
directed to a purely abstract idea is, nonetheless, patent-ineligible.
Diamondv. Diehr, 450 U.S. 175, 188-89 (1981) ("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.")
Appellants argue that the claims recite "specific technical elements"
that "confine the alleged abstract idea to a particular, useful application,"
thereby differentiating Appellants' claims from the claims held ineligible in
Content Extraction and Transmission, LLC v. Wells Fargo Bank, N.A., 77 6
F.3d 1343 (Fed. Cir. 2014), Cybeifone Sys., LLC v. CNN Interactive Group,
Inc., 558 Fed. Appx. 988 (Fed. Cir. 2014), and Digitech Image Techs., LLC
v. Electronic for Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014). App. Br.
8
Appeal 2016-005478
Application 13/622,934
11-12. Yet, the test is not whether the claim is confined to a particular field
of use or technological environment. Intellectual Ventures I LLC v. Capital
One Bank (USA), 792 F.3d 1363, 1366 (Fed. Cir. 2015) ("[a]n abstract idea
does not become nonabstract by limiting the invention to a particular field of
use or technological environment").
Appellants direct our attention to "the recited directed graph structures
( claims 1 and 12), pointers used to link data collected at different times to a
summarization record ( claim 1 ), and tracking relationships between data
collected at different times ( claim 1 )" as "specific technological features"
that derive various benefits, such as increased flexibility, more efficient
storage space, decreased load times, and alleviation for data cleansing. App.
Br. 12 (citing Spec. ,r,r 37-38, 173-194); see also Reply Br. 6-7 (citing
Spec. ,r,r 37-38, 173-194; Figs. 8-10, and 11-14EE). In the Reply Brief
Appellants additionally argue that the claims solve "how to efficiently store
electronic medical records that develop over time in a manner [sic] and how
to simultaneously make the smaller amount of data that is stored more useful
and easier to process during subsequent data retrieval." Reply Br. 8.
Appellants further contend that the problem has no real-world equivalent
with paper medical records that store data over time, because paper records
cannot be stored using the same techniques (e.g., pointers). Id.
However, the relevant question, even at the first step of the
Mayo/Alice analysis, is "whether the claims are directed to an improvement
in computer functionality versus being directed to an abstract idea." Enfish,
LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). Here, the
invention uses computer technology, but the Specification describes the
claimed solution as a scheme in collecting, storing and managing electronic
9
Appeal 2016-005478
Application 13/622,934
records over time. See, e.g., Spec. ,r,r 3, 5, and 12-13. Indeed, this scheme
is also what Appellants effectively describe as the claimed solution. See
Reply Br. 8. And collecting, storing, and organizing information describes
the abstract idea to which Appellants' claims are directed, not an
improvement in computer technology. Erie Indemnity Co., 850 F.3d at 1328
("the heart of the claimed invention lies in creating and using an index to
search for and retrieve data ... an abstract concept").
As noted by Appellants (App. Br. 12), claim 1 recites linking a data
object of a first instance to a summarization reference with a pointer where
the plurality of data objects and summarization reference are related as part
of a graph directed structure, and providing continuity for the plurality of
data objects of the first instance over time. And claim 12 recites storing text
as a patient medical record using a computer with directed graph database
storage. But we are not persuaded that these recitations, considered alone or
as an ordered combination, are enough to transform the patent-ineligible
abstract idea into a patent-eligible invention. Instead, reasonably broadly
construed, the specific computer technologies recited cover generic
components, e.g., pointers, directed graph data storage, employed in a
conventional manner. See, e.g., Spec. ,r,r 187-188 ( describing directed graph
database storage as known); see also Erie Indemnity Co., 850 F.3d at 1331
("[ t ]he recited use of a mobile interface and pointers ... evidences nothing
more than a 'generic computer implementation' of the abstract idea) (citing
Alice, 134 S. Ct. at 2357), id. ("pointers themselves are conventional, as is
the manner in which the claims employ them") ( citation omitted).
Claim 1 additionally recites tagging elements within a domain within
the longitudinal electronic medical record with a controlled vocabulary.
10
Appeal 2016-005478
Application 13/622,934
Claim 12 recites additionally recites tagging the medical record with a
source vocabulary. But to the extent Appellants contend that use of a
vocabulary to tag the medical record renders the claim non-abstract or
constitutes significantly more, we disagree. Erie Indemnity Co., 850 F.3d at
1328 ("[t]he inclusion of XML tags as the chosen index building block, with
little more, does not change th[ e] conclusion [ that the claim is abstract]"), id.
at 1329 ("the claims do not sufficiently recite how the inclusion of XML
tags or metadata leads to an improvement in computer database
technology").
We are not persuaded of Examiner error by Appellants' arguments
that the claims are analogous to the hypothetical, patent-eligible claims in
Examples 1, 4 2, 5 and 21 6 of the Interim Guidance, as well as the claims in
DDR Holdings. 7 App. Br. 12-13; see also Reply Br. 7-8. As an initial
matter, with respect to the USPTO Examples, the Board decides cases in
accordance with the law, not hypothetical "examples [that] are intended to
be illustrative only." Examples Jan. 2015 I. Nonetheless, we find no
parallel between Appellants' claims and the hypothetical, patent-eligible
claims described in Examples 1, 2, and 21 of the Interim Guidance.
Example 1, for example, includes claims directed to physically
isolating a received communication on a memory sector and extracting
4 Examples: Abstract Ideas (Jan. 27, 2015) (available at
https ://www.uspto.gov I sites/ default/files/ documents/ abstract_idea_examples
.pdf) (hereinafter "Examples Jan. 2015"), 1-3.
5 Id. at 4--6.
6 July 2015 Update Appendix 1: Examples (July 30, 2015) (available at
https://www.uspto.gov/sites/default/files/documents/ieg-july-2015-appl.pdf)
(hereinafter "Examples July 2015") 1-5.
7 DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014).
11
Appeal 2016-005478
Application 13/622,934
malicious code to create a sanitized communication in a new data file, which
is inextricably tied to computer technology. See Examples Jan. 2015 2.
Such action does not describe a concept similar to those found by the courts
to be abstract, and is "inextricably tied to computer technology." Id. In
contrast, Appellants' claims 1 and 12 focus on collecting, storing, and
organizing data, which is a concept similar to those found by the courts to be
abstract. While Appellants' claims are implemented using computer
technology, the concept of collecting, storing, and organizing data is not
inextricably tied to computer technology. To the contrary, like the concept
of "organizing and accessing records through an index-searchable database"
described in Erie Indemnity Co., the concept of collecting, storing, and
organizing medicale records includes longstanding conduct that existed
well-before the advent of computers and the Internet. Erie Indemnity Co.,
850 F.3d at 1327.
Example 2 is based on DDR Holdings. There, the Federal Circuit held
that the claimed solution is necessarily rooted in computer technology to
overcome a problem specifically arising in the realm of computer networks
and, thus, not abstract. Namely, the court found that the claims specify how
interactions with the Internet are manipulated to yield a desired 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; see
also Examples Jan. 2015 4---6. Appellants' claims, in contrast, do not
overcome any problem arising in the realm of computer networks. See Spec.
,r 5 ( claimed solution addresses "the real need of the actual care of patients
or the proper storage of patient information over time").
12
Appeal 2016-005478
Application 13/622,934
Example 21 's patent-eligible claim 2 is modeled after the technology
in Google Inc. v. Simpleair, Inc., Covered Business Method Case No. CBM
2014-00170 (Jan. 22, 2015). See Examples Jan. 2015 I. Claim 2 recites a
series of steps for distributing stock quotes to selected remote devices that
amount to "comparing and organizing data," which is a concept similar to
mental processes and other concepts that courts have found to be abstract
under step one. Examples July 2015 4. However, applying step two, the
claimed invention "addresses the Internet-centric challenge of alerting a
subscriber with time sensitive information when the subscriber's computer is
offline" by "transmitting the alert over a wireless communication channel to
activate the stock viewer application, which causes the alert to display[,] and
enables the connection of the remote subscriber computer to the data source
over the Internet when the remote subscriber computer comes on line." Id.
No analogous limitation is recited in Appellants' claims.
We are not persuaded by Appellants' argument that the initial
assignment of class and art unit should not be determinative of patent
eligibility. App. Br. 14--15. The Examiner does not reject these claims
because they are in class 705. Instead, the Examiner applies the framework
set forth by the Supreme Court in determining whether claims are directed to
patent eligible subject matter.
We are not persuaded by Appellants' argument that the claims "pass
muster using the streamlined eligibility analysis because they do not seek to
tie up the recited allegedly abstract idea of 'providing healthcare."' App.
Br. 15. As an initial matter, the streamlined analysis set in the 2014 Interim
Guidance is an optional tool for Examiners. See 2014 Interim Guidance on
Patent Subject Matter Eligibility, 79 Fed. Reg. 74618, 74625 (Dec. 16,
13
Appeal 2016-005478
Application 13/622,934
2014) ("a streamlined eligibility analysis can be used") ( emphasis added).
Moreover, pre-emption is not the test for eligibility under § 101. Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1377 (Fed. Cir. 2015)
("Where 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.").
Appellants' Specification does not adequately support Appellants'
argument that the invention solves a computer problem or recites additional
elements that amount to significantly more than the abstract idea, and
Appellants do not show how the claims are technically performed such that
they are not routine, conventional functions of a computer.
Dependent Claims 2-11, 13, and 14
In the Appeal Brief, Appellants argue that the dependent claims are
patent-eligible by virtue of their dependence from claims 1 and 12 "plus the
additional recited limitations." App. Br. 15. In the Reply Brief, Appellants
assert that the recitations of electronically tagging domains ( claim 2),
clarifying the electronic relationship between vocabularies in different
domains ( claim 4 ), and reducing the need to cleanse data ( claim 5) further
show that the claims are rooted in computer technologies. Putting aside
whether Appellants have shown "good cause" under 37 C.F.R. § 41.41(b)(2)
to present this new argument and whether this statement rises to the level of
a substantive argument, we disagree that these limitations show the claims
are rooted in technology. Erie Indemnity Co., 850 F.3d at 1328-29 ("[w]hile
limiting the index to XML tags certainly narrows the scope of the claims, in
this instance, it is simply akin to limiting an abstract idea to one field of use
or adding token post solution components that do not convert the otherwise
14
Appeal 2016-005478
Application 13/622,934
ineligible concept into an inventive concept.") ( citing Bilski v. Kappas, 130
S. Ct. 3218 (2010)).
We are not persuaded that the Examiner erred in rejecting independent
claims 1 and 12 or dependent claims 2-11, 13, and 14 under 35 U.S.C.
§ 101. Therefore, we sustain the Examiner's rejection.
DECISION
The Examiner's rejection of claims 1-14 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
15