Ex Parte Neben et alDownload PDFPatent Trial and Appeal BoardNov 13, 201714050333 (P.T.A.B. Nov. 13, 2017) Copy Citation United States Patent and Trademark Office UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O.Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 14/050,333 10/09/2013 Kathleen Neben TZG0034-DIV2 2540 93261 7590 11/15/2017 Bey & Cotropia PLLC (Trizetto Customer Number) ATTN: Dawn-Marie Bey 213 Bayly Court Richmond, VA 23229 EXAMINER LEMIEUX, JESSICA ART UNIT PAPER NUMBER 3693 NOTIFICATION DATE DELIVERY MODE 11/15/2017 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): dawnmarie @ beycotropia.com bey_cotropia_docketing@cardinal-ip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KATHLEEN NEBEN, JULIE SKEEN, and SCOTT JOHNSON Appeal 2016-003603 Application 14/050,3331 Technology Center 3600 Before CARL W. WHITEHEAD JR., JEREMY J. CURCURI, and MICHAEL J. ENGLE, Administrative Patent Judges. ENGLE, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1—10. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Technology The application is related to “incentive programs” that “reward individuals for achieving health-related goals.” Spec. 1 3. Illustrative Claim Claim 1 is illustrative and reproduced below: 1 Appellants state the real party in interest is TriZetto Corp. App. Br. 2. Appeal 2016-003603 Application 14/050,333 1. An automated process for determining compliance with a health incentive program comprising; receiving at a claim processing application of a core server, member medical claims data from a first data source, the member medical claims data representing medical claims of multiple members; applying at least a first filter by the claim processing application, to the received member medical claims data to identify categories of interest within the member medical claims data and storing the medical claims data in a first staging table in accordance with the identified categories of interest; receiving an indicator at a conditional processing engine of the core server that the member medical claims data is available for processing for member compliance with one or more health incentive programs; determining by the conditional processing engine if the one or more health incentive programs applies to the member medical claims data in accordance with the categories of interest; applying by the conditional processing engine compliance rules to the member medical claims data for each applicable health incentive program to determine if a member has attained one or more achievement levels of each applicable health incentive program; generating by the processor a new achievement record or an update to an existing achievement record for each of the multiple members if the member has attained one or more achievement levels in accordance with the member medical claims data; receiving by the conditional processing engine member non-medical claims data from a second source indicating that one or more members have attained one or more achievement levels; generating by the conditional processing engine a new achievement record or an update to an existing achievement record for each of the multiple members in accordance with the one or more achievement levels attained in accordance with the non-medical claims data; and making the achievement records available for processing by a reward generation component. 2 Appeal 2016-003603 Application 14/050,333 Rejection Claims 1—10 stand rejected under 35 U.S.C. § 101 as being directed to ineligible subject matter. Final Act. 3^4. ISSUE Did the Examiner err in concluding claim 1 is directed to an ineligible abstract idea without significantly more? ANALYSIS Section 101 defines patentable subject matter: “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. The Supreme Court, however, has “long held that this provision contains an important implicit exception” that “[ljaws of nature, natural phenomena, and abstract ideas are not patentable.” Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012) (quotation omitted). To determine patentable subject matter, the Supreme Court has set forth a two part test. Step 1 — Whether the Claims Are Directed to an Abstract Idea “First, we determine whether the claims at issue are directed to one of those patent-ineligible concepts” of “laws of nature, natural phenomena, and abstract ideas.” Alice Corp. v. CLSBankInt’l, 134 S. Ct. 2347, 2355 (2014). “The inquiry often is whether the claims are directed to ‘a specific means or method’ for improving technology or whether they are simply directed to an abstract end-result.” RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1326 (Fed. Cir. 2017). 3 Appeal 2016-003603 Application 14/050,333 A court must be cognizant that “all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas” {Mayo, 566 U.S. at 71), and “describing the claims at... a high level of abstraction and untethered from the language of the claims all but ensures that the exceptions to § 101 swallow the rule.” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1337 (Fed. Cir. 2016). Instead, “the claims are considered in their entirety to ascertain whether their character as a whole is directed to excluded subject matter.” Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015). The Examiner concludes that claim 1 is “directed to determining compliance with a health incentive program, which is a fundamental economic practice and therefore an abstract idea.” Ans. 3. “While . . . receiving claims, filtering and comparing claims, storing claims, applying rules, confirming eligibility, and generating records may narrow the idea, they do not make it less abstract.” Id. at 5. Instead, such steps are “well- established fundamental economic practices.” Id. We have considered Appellants’ arguments but are not persuaded the Examiner erred in concluding the claims are directed to an abstract idea. “In addressing the first step of the section 101 inquiry, as applied to a computer- implemented invention, it is often helpful to ask whether the claims are directed to ‘an improvement in the functioning of a computer,’ or merely ‘adding conventional computer components to well-known business practices.’” Affinity Labs of Texas, LLC v. Amazon.com Inc., 838 F.3d 1266, 1270 (Fed. Cir. 2016) (quoting Enfish, 822 F.3d at 1338). Here, we agree with the Examiner that the claims are not an improvement in the functioning of a computer and instead are merely adding conventional computer 4 Appeal 2016-003603 Application 14/050,333 components to well-known business practices. Looking at the claims as an ordered combination to determine eligibility for a health incentive, the claims receive data, apply filters and rules for eligibility, and record the result. See claim 1; Ans. 5. Yet the Federal Circuit has “previously held other patent claims ineligible for reciting similar abstract concepts that merely collect, classify, or otherwise filter data.” Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315, 1327 (Fed. Cir. 2017); see also BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016) (“filtering content is an abstract idea because it is a longstanding, well-known method of organizing human behavior, similar to concepts previously found to be abstract”). For example, in one recent case, the Federal Circuit affirmed the ineligibility of claims involving “acquiring identification data . . ., using the data to verify the validity . . ., and denying access . . . if. . . invalid.” Smart Sys. Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1371 (Fed. Cir. 2017). In Smart Systems, the Federal Circuit held: The Asserted Claims are not directed to a new type of bankcard, turnstile, or database, nor do the claims provide a method for processing data that improves existing technological processes. Rather, the claims are directed to the collection, storage, and recognition of data. We have determined that claims directed to the collection, storage, and recognition of data are directed to an abstract idea. Smart Sys., 873 F.3d at 1372. The claims here are analogous in that they are directed to the collection, filtering, and recognition of data, rather than an improvement in technology. In their briefs, Appellants recite the claim language but have not sufficiently explained what specifically about the limitations renders the 5 Appeal 2016-003603 Application 14/050,333 claims not directed to an abstract idea or a fundamental economic practice. See App. Br. 10-11. “Though lengthy and numerous, the claims do not go beyond requiring the collection, analysis, and display of available information in a particular field, stating those functions in general terms, without limiting them to technical means for performing the functions that are arguably an advance over conventional computer and network technology.” Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1351 (Fed. Cir. 2016). “[MJerely selecting information, by content or source, for collection, analysis, and display does nothing significant to differentiate a process from ordinary mental processes, whose implicit exclusion from §101 undergirds the information-based category of abstract ideas.” Id. at 1355; see also Fair Warning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1097—98 (Fed. Cir. 2016). Appellants’ reliance on a single decision from the Middle District of Florida is neither binding on the Board nor persuasive in light of more recent precedent from the Federal Circuit. Reply Br. 3 (citing StoneEagle Servs., Inc. v. Pay-Plus Sols., Inc., 113 F. Supp. 3d 1241 (M.D. Fla. 2015)). Appellants also argue “[t]he present claims are particularized to the technically complex, data-rich and processing intensive fields of computer and network-implemented medical claims processing and health-plan management.” App. Br. 14. Yet the Supreme Court has instructed that “limiting the use of an abstract idea to a particular technological environment” cannot transform a patent-ineligible abstract idea into a patent- eligible invention. Alice, 134 S. Ct. at 2358 (quotation omitted); Smart Sys., 873 F.3d at 1373 (“But, as we have said before, merely limiting the field of 6 Appeal 2016-003603 Application 14/050,333 use of the abstract idea to a particular environment does not render the claims any less abstract.”) (quotation omitted). We therefore agree with the Examiner that the claims are directed to an abstract idea. Step 2 — Whether the Claims Amount to Significantly More 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.” Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 79, 78). The Supreme Court has “described step two of this analysis 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.” Id. (quotation omitted). For computer-related technology, the Federal Circuit has held that a claim may pass the second step if “the claimed solution is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer [technology].” DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014) (e.g., “a challenge particular to the Internet”). Appellants argue “[t]he claimed data parsing, organizing and staging by particular category as part of the core medical claims processing are critical elements that are particular to the problem of data identification and utilization within the health-care field.” App. Br. 14; see also Reply Br. 2—A. Yet we agree with the Examiner that the claims instead recite “a business plan enhanced by common generic hardware.” Ans. 6. Appellants have not sufficiently explained how the recited elements are a technical solution to a technical problem. Ans. 5. We agree with the Examiner that 7 Appeal 2016-003603 Application 14/050,333 the claims merely recite generic computer components performing steps that “would be routinely used by those of ordinary skill in the art in order to apply the abstract idea.” Ans. 6—7. Merely naming the components (e.g., “claim processing application” or “conditional processing engine”) without explaining what technical problem they overcome or technical solution they provide is insufficient. “Rather, the claims recite both a generic computer element—a processor—and a series of generic computer ‘components’ that merely restate their individual functions—i.e., organizing, mapping, identifying, defining, detecting, and modifying. That is to say, they merely describe the functions of the abstract idea itself, without particularity. This is simply not enough under step two.” Intellectual Ventures ILLC v. Capital One Fin. Corp., 850 F.3d 1332, 1341 (Fed. Cir. 2017); see also Smart Sys., 873 F.3d at 1374 (“When claims like the Asserted Claims are directed to an abstract idea and merely require generic computer implementation, they do not move into section 101 eligibility territory.”) (quotations omitted). Appellants also argue “the claims at issue do not attempt to preempt every application of the idea.” App. Br. 14. “But we have consistently held that claims that are otherwise directed to patent-ineligible subject matter cannot be saved by arguing the absence of complete preemption.” Return Mail, Inc. v. U.S. Postal Service, 868 F.3d 1350, 1370 (Fed. Cir. 2017). “While preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). “Where a patent’s claims are deemed only to disclose patent ineligible 8 Appeal 2016-003603 Application 14/050,333 subject matter under the Mayo framework, as they are in this case, preemption concerns are fully addressed and made moot.” Id. With respect to dependent claims 2—10, the Examiner concludes that “although the dependent claims further narrow the abstract idea they don’t include additional elements that are sufficient to amount to significantly more than the judicial exception.” Ans. 3. Appellants have not directed us to any particular element in any dependent claim that adds significantly more than the abstract idea. See App. Br. 15—16. “Thus, while these claims may have a narrower scope than the representative claims, no claim contains an ‘inventive concept’ that transforms the corresponding claim into a patent- eligible application of the otherwise ineligible abstract idea.” Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat. Ass ’n, 776 F.3d 1343, 1349 (Fed. Cir. 2014). Accordingly, we sustain the Examiner’s rejection of claims 1—10. DECISION For the reasons above, we affirm the Examiner’s decision rejecting claims 1—10. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 41.50(f). AFFIRMED 9 Copy with citationCopy as parenthetical citation