Ex Parte Pope et al

Patent Trial and Appeal Board

Mar 30, 2018

13450725 (P.T.A.B. Mar. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/450,725 04/19/2012
70406 7590 04/03/2018
WAGNER BLECHER LLP
123 WESTRIDGE DRIVE
WATSONVILLE, CA 95076
FIRST NAMED INVENTOR
Michael C. Pope
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.
IDN-001 3554
EXAMINER
DURANT, JONATHAN W
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
04/03/2018 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):
patents@wagnerblecher.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL C. POPE and CHRISTOPHER P. SCHMIDT
Appeal2016-002868 1
Application 13/450,725
Technology Center 3600
Before ANTON W. PETTING, BIBHU R. MOHANTY, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
FINAMORE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellants appeal from the
Examiner's decision to reject claims 1-20. We have jurisdiction under
§ 6(b).
We AFFIRM.
1 Our Decision references Appellants' Specification ("Spec.," filed Apr. 19,
2012), Appeal Brief ("Appeal Br.," filed July 13, 2015), and Reply Brief
("Reply Br.," filed Jan. 19, 2016), as well as the Examiner's Final Office
Action ("Final Act.," mailed Feb. 12, 2015) and Answer ("Ans.," mailed
Nov. 17, 2015).
Appeal2016-002868
Application 13/450,725
SUBJECT MATTER ON APPEAL
The invention relates to a method and system for providing
dermatologic treatment. Spec., Title, i-f 12. Claims 1, 12, and 17 are the
independent claims on appeal. Independent claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A method for providing dermatologic treatment, said
method comprising:
receiving, performed by a computer system, a treatment
request from a seeking entity, said treatment request comprising
an image of a skin of a patient, said treatment request associated
with patient information of said patient;
sending, performed by the computer system, a notification
of receipt of said treatment request to a providing entity, wherein
said providing entity is a dermatologist;
presenting, performed by the computer system, a plurality
of diagnoses groups in response to said providing entity
accessing said treatment request, wherein a diagnosis group of
said diagnoses groups comprises a plurality of diagnoses that are
grouped together according to types of skin conditions;
presenting, performed by the computer system, said
plurality of diagnoses in accordance with a selection of said
diagnoses group;
presenting, performed by the computer system, a plurality
of treatment options in response to receiving a selection of a
diagnosis of said plurality of diagnoses, wherein at least one
treatment option of said plurality of treatment options comprises
a medication placed within said plurality of treatment options as
an advertisement;
generating, performed by the computer system, a selected
treatment option in response to receiving a selection of a
treatment option of the plurality of treatment options; and
sending, performed by the computer system, said selected
treatment option to said seeking entity.
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REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Pak
Hoffner et al. ("Hoffner")
Wong et al. ("Wong")
O'Halloran
US 2005/0251415 Al
US 2007 /0038484 Al
US 2013/0018672 Al
US 8,392,244 Bl
REJECTIONS 2
Nov. 10, 2005
Feb. 15,2007
Jan. 17,2013
Mar. 5, 2013
The Examiner rejects the claims on appeal as follows:
claims 1-20 under 35 U.S.C. § 101 as non-statutory subject matter;
claims 1-5, 9, 11-13, 17, and 18 under 35 U.S.C. § 103(a) as
unpatentable over Pak and 0 'Halloran;
claims 6-8, 14, 15, 19, and 20 under 35 U.S.C. § 103(a) as
unpatentable over Pak, 0 'Halloran, and Wong; and
claims 10 and 16 under 35 U.S.C. § 103(a) as unpatentable over Pak,
0 'Halloran, and Hoffner.
ANALYSIS
Non-Statutory Subject Matter
As an initial matter, we are not persuaded of error by Appellants'
argument that "the claim scope is clearly circumscribed in such a manner
that it does not cover the entire use of any overarching idea, abstract or
otherwise." Reply Br. 5. Although preemption may be the concern behind
2 The Examiner has withdrawn the rejection of claims 1-20 under 35 U.S.C.
§ 112, second paragraph. Ans. 17.
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the judicial exceptions to statutory subject matter, preemption is not the test
for eligibility. "The Supreme Court has made clear that the principle of
preemption is the basis for the judicial exceptions to patentability. For 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) (citation omitted).
Appellants further argue that the Examiner has failed to set forth a
prima facie case of patent-ineligible subject matter. Appeal Br. 7-8;
Reply Br. 6. According to Appellants, the Examiner has not provided
documentary evidence that all of the claim elements have been considered
(Appeal Br. 7), and Appellants similarly assert that there is no indication that
the Examiner considered the dependent claims (id.; Reply Br. 6). Appellants
also argue that there is no objective evidence for the Examiner's
determination that the claims are directed to an abstract idea. Appeal Br. 8.
Appellants do not apprise us of error.
With respect to the requirement to make a prima facie case, the
Federal Circuit has held that
the PTO carries its procedural burden of establishing a prima
facie case when its rejection satisfies 35 U.S.C. § 132, in
"notify[ing] the applicant ... [by] stating the reasons for [its]
rejection, or objection or requirement, together with such
information and references as may be useful in judging of the
propriety of continuing the prosecution of [the] application."
In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (alterations in original)
(quoting§ 132). All that is required of the Office is to set forth the statutory
basis of the rejection in a sufficiently articulate and informative manner. Id.
at 1363; see also Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990)
("Section 132 is violated when a rejection is so uninformative that it
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prevents the applicant from recognizing and seeking to counter the grounds
for rejection."). Furthermore, although evidence may be necessary to meet
the notice requirement of§ 132 in some cases, it is not necessary in every
case.
Here, in determining that the claims are patent-ineligible, i.e.,
judicially-excepted from statutory subject matter under § 101, the Examiner
analyzes the claims using the two-step framework set forth in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289,
1296-97 (2012) and reiterated in Alice Corp. Pty. Ltd. v. CLS Bank
International, 134 S. Ct. 2347, 2355 (2014), which, in the first step,
considers whether a claim is directed to a patent-ineligible concept, e.g., an
abstract idea, and, if so, considers, in the second step, whether the claim
recites an inventive concept-an element or combination of elements
sufficient to ensure the claim amounts to significantly more than the abstract
idea and transform the nature of the claim into a patent-eligible application.
Final Act. 2-3. More specifically, pursuant to the first step, the Examiner
determines the claims are directed to the abstract idea of "organizing
diagnosis and treatment decision support including relevant advertising." Id.
at 3. In doing so, the Examiner explains that the concept of "organizing
diagnosis and treatment decision support including relevant advertising" is
similar to other concepts the courts have held to be abstract ideas, namely
using categories to organize, store, and transmit information in Cyberfone
Systems, LLC v. CNN Interactive Group, Inc., 558 F. App'x 988
(Fed. Cir. 2014) and comparing new and stored information and using rules
to identify options in SmartGene v. Advanced Biological Laboratories, S.A.,
555 F. App'x 950 (Fed. Cir. 2014). Ans. 18.
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Under the second step, the Examiner determines that the claims do not
include additional elements amounting to significantly more than the
abstract idea because the additional limitations amount to mere instructions
to implement the idea on a computer. Final Act. 3. The Examiner also
determines that the claimed steps require only generic computer structure
that performs generic computer functions that are well-understood, routine,
and conventional, such as receiving, sending, and presenting information in
response to accessing, selecting, and generating data. Id.; Ans. 18.
Although the Examiner does not explicitly mention each claim
limitation or the dependent claims, we understand the Examiner's analysis to
include each limitation and the dependent claims. Final Act. 2-3; Ans. 19.
For example, we understand the Examiner determines that the dependent
claims are patent ineligible for the same reasons as the independent claims.
Ans. 19.
As such, the Examiner sufficiently informs Appellants that the claims
are ineligible pursuant to the two-step framework for determining patent
eligibility. Furthermore, there is no indication that Appellants do not
recognize or understand the Examiner's rejection, as Appellants'
understanding is manifested in their arguments traversing it. Accordingly,
the Examiner's rejection satisfies the notice requirement of§ 132 and sets
forth a prima facie case of patent-ineligible subject matter. We, therefore,
consider Appellants' remaining arguments to determine whether the
Examiner erred in determining that the claims are patent ineligible.
Appellants argue the Examiner erred in determining that the claims
are directed to an abstract idea pursuant to the first step of the
patent-eligibility analysis. Appeal Br. 5---6; Reply Br. 2-3. According to
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Appellants, the claims are not directed to "organizing diagnosis and
treatment decision support including relevant advertising," but rather require
a computer and therefore provide technological improvements to the
pertinent technology. Appeal Br. 5. Appellants also assert that the claimed
invention does not fall within one of the categories of abstract ideas, i.e.,
fundamental economic practices, certain methods of organizing human
activities, an idea of itself, and mathematical relationships/formulas. Id.
More specifically, Appellants contend that
at least the features of, "presenting, performed by the computer
system, a plurality of diagnoses groups in response to said
providing entity accessing said treatment request, wherein a
diagnosis group of said diagnoses groups comprises a plurality
of diagnoses that are grouped together according to types of skin
conditions," "presenting, performed by the computer system, a
plurality of treatment options in response to receiving a selection
of a diagnosis of said plurality of diagnoses, wherein at least one
treatment option of said plurality of treatment options comprises
a medication placed within said plurality of treatment options as
an advertisement," and "generating, performed by the computer
system, a selected treatment option in response to receiving a
selection of a treatment option of the plurality of treatment
options" are not Fundamental Economic Practices, Methods of
Organizing Human Activity, An Idea of itself, such as a mental
process (thinking), or Mathematical Relationships/Formulas.
Reply Br. 3. Appellants' arguments do not apprise us of error.
In determining what the claims are directed to pursuant to the first
step of the patent-eligibility analysis, our reviewing court has instructed that
"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)
(emphasis added). Here, independent claim 1, for example, recites a method
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for providing dennatologic treatment comprising the steps of:
"receiving ... a treatment request from a seeking entity, said treatment
request comprising an image of a skin of a patient, said treatment request
associated with patient information of said patient"; "sending ... a
notification of receipt of said treatment request to a providing entity,
wherein said providing entity is a dermatologist"; "presenting ... a plurality
of diagnoses groups in response to said providing entity accessing said
treatment request, wherein a diagnosis group of said diagnoses groups
comprises a plurality of diagnoses that are grouped together according to
types of skin conditions"; "presenting ... said plurality of diagnoses in
accordance with a selection of said diagnoses group"; "presenting ... a
plurality of treatment options in response to receiving a selection of a
diagnosis of said plurality of diagnoses, wherein at least one treatment
option of said plurality of treatment options comprises a medication placed
within said plurality of treatment options as an advertisement";
"generating ... a selected treatment option in response to receiving a
selection of a treatment option of the plurality of treatment options"; and
"sending ... said selected treatment option to said seeking entity." We
agree with the Examiner that these steps are a method for "organizing
diagnosis and treatment decision support including relevant advertising."
See also Spec. i-f 12 ("Example techniques, devices, systems, and methods
for diagnosing and treating dermatologic conditions are described herein.").
Said differently, a method for providing dermatologic treatment that presents
a plurality of diagnoses groups, presents a plurality of treatment options in
response to a selection of a diagnosis, whereby at least one treatment option
includes an advertisement for a medication, and generating a selected
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treatment option in response to receiving a selection of a treatment option is
nonetheless a method for "organizing diagnosis and treatment decision
support including relevant advertising."
Independent claim 1 further recites that a computer system performs
each of the claimed method steps. Yet, the simple recitation of a computer
or computing components, in and of itself, does not mean the claimed
invention is an improvement in computer capabilities, as opposed to an
abstract idea. According to our reviewing court, "the first step in the Alice
inquiry ... asks whether the focus of the claims is on the specific asserted
improvement in computer capabilities ... or, instead, on a process that
qualifies as an 'abstract idea' for which computers are invoked merely as a
tool." Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36
(Fed. Cir. 2016). As set forth above, independent claim 1 recites a method
for providing dermatologic treatment, and further recites that each step of
the method is performed by the computer system. Moreover, the
Specification describes that the invention relates to "techniques, devices,
systems, and methods for diagnosing and treating dermatologic conditions."
Spec. i-f 12. The Specification also describes that the computer system "can
operate on or within a number of different computer systems including, but
not limited to, general purpose networked computer systems, embedded
computer systems, routers, switches, server devices, client devices, various
intermediate devices/nodes, stand alone computer systems, media centers,
handheld computer systems, multi-media devices, and the like." Id. i-f 65.
As such, we fail to see how the claimed invention is an improvement in
computer capabilities. Rather, the claimed invention simply uses the
computer system as a tool to perform the steps for providing dermatological
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treatment. Accordingly, Appellants do not apprise us of error in the
Examiner's determination that the character of each of the claims, as a
whole, is directed to "organizing diagnosis and treatment decision support
including relevant advertising."
Turning to whether "organizing diagnosis and treatment decision
support including relevant advertising" is an abstract idea, the Federal
Circuit has explained that ''the decisional mechanism courts now apply is to
examine earlier cases in which a similar or parallel descriptive nature can be
seen-what prior cases were about, and which way they were decided."
Amdocs (Isr.) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294
(Fed. Cir. 2016). As the Examiner points out, the concept of "organizing
diagnosis and treatment decision support including relevant advertising" is
similar to other concepts the courts have held to be abstract ideas, namely
using categories to organize, store, and transmit information in Cyberfone
and comparing new and stored information and using rules to identify
options in SmartGene. Ans. 18. Appellants do not assert, and we fail to see,
any meaningful distinction between the concept of "organizing diagnosis
and treatment decision support including relevant advertising" and these
abstract ideas. Accordingly, we see no error in the Examiner's
determination that the claims are directed to "organizing diagnosis and
treatment decision support including relevant advertising," which is an
abstract idea.
Seeing no error in the Examiner's determination that the claims are
directed to an abstract idea pursuant to the first step of the patent-eligibility
analysis, we tum to Appellants' arguments under the second step.
Appellants allege that the claims amount to significantly more than the
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abstract idea because the claimed invention provides an improvement to the
technical field of medical diagnostics. Appeal Br. 6-7; Reply Br. 3-5.
Appellants' arguments do not apprise us of error.
At the outset, we disagree with Appellants that medical diagnostics, in
general, is a technical field. A medical diagnosis involves the analysis of a
patient's symptoms to determine a cause or a condition. Accordingly,
making a medical diagnosis may simply involve a series of mental steps,
such that making medical diagnoses, i.e., medical diagnostics, is not a
technical field.
That notwithstanding, we nonetheless fail to see how the claimed
invention is an improvement to medical diagnostics. Independent claim 1,
for example, recites the steps of receiving, sending, presenting, generating,
and sending data. Even if we agree with Appellants that independent
claim 1 recites an improvement, the claimed invention is simply an
improved way of organizing, analyzing, and presenting data that is applied
to the field of medical diagnostics. In other words, the improvement is to
the handling of data, not to the field of medical diagnostics.
Furthermore, independent claim 1 is linked to the field of medical
diagnostics by only the nature of the data. According to the Federal Circuit,
"merely 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." Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016). Accordingly, the claim
limitations relating to the field of medical diagnostics do not amount to
significantly more than the abstract idea.
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We are also unpersuaded of error by Appellants' argument that the
claims recite features other than what is well-known, routine, and
conventional in the field. Reply Br. 5. Notwithstanding that '"the § 101
patent-eligibility inquiry and, say~ the § 102 novelty inquiry might
sometimes overlap~ . , . a claim for a nnv abstract idea is still an abstract
idea.'' .. ~vnop.<-,ys, Inc. v. 1tfentor Ciraphics Cmp., 839 F.3d 1138) 1151
(Fed. Cir. 2016) (quoting l\4ayo, 132 S. Ct at 1304). The question in the
second step of the patent-eligibility analysis is not whether a clahn limitation
is novel, but rather \vhether the implementation of the abstract idea involves
"more than performance of 'well-understood, routine, [and] conventional
activities previously knovvn to the industry. rn Content Extraction &
Transmission LLC v. Wells Fargo Bank, N.A., 776 F3d 1343, 1347-48
(Fed, Cir, 2014) (quoting Alice, 134 S. Ct at 2359).
Here, the claims recite that the abstract idea is implemented on a
computer system. As set forth above, the Specification describes that the
computer system can be a general purpose networked computer system.
Spec. i-f 65. Moreover, there is no indication that the implementation of the
claimed steps requires something apart from the well-known, routine, and
conventional computer functions of receiving, analyzing, presenting, and
sending data. Ans. 18. Accordingly, even ifthe claims recite steps that are
novel and nonobvious, we fail to see how the claimed invention is something
other than the generic computer implementation of the abstract idea, which
does not amount to significantly more than the abstract idea.
In view of the foregoing, Appellants do not apprise us of error in the
Examiner's determination that the claims are patent-ineligible, i.e., judicially
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excepted from statutory subject matter. Accordingly, we sustain the
rejection of claims 1-20 under 35 U.S.C. § 101.
Obviousness
Appellants argue that Pak does not disclose "presenting ... a plurality
of diagnoses groups in response to said providing entity accessing said
treatment request, wherein a diagnosis group of said diagnoses groups
comprises a plurality of diagnoses that are grouped together according to
types of skin conditions," as recited in independent claim 1. Appeal Br. 11-
13. More specifically, Appellants contend that Pak does not disclose a
plurality of diagnoses groups as recited in this limitation. Id. at 12.
Appellants' argument is persuasive.
In rejecting independent claim 1, the Examiner relies on
paragraphs 352, 353, and 355 of Pak for disclosing the disputed limitation.
Final Act. 5. Paragraph 352 discloses that when a consulting
teledermatologist selects a diagnosis, a list of differential diagnosis options
is automatically generated. Paragraph 353 similarly discloses that when a
requesting physician selects a diagnosis, a list of related diagnostic options is
automatically generated. Paragraph 355 discloses that the consulting
teledermatologist may use "a pre-formed template of common diagnoses
such as 'Actinic Keratosis, Urticaria, etc."'
Pak discloses a plurality of diagnoses, namely the common diagnoses
and the diagnosis options, but Pak does not expressly disclose that either the
common diagnoses or the diagnosis options are in groups. The Examiner,
however, finds that "each diagnosis is itself functionally a diagnosis group."
Ans. 21. Although Pak discloses that the selection of a diagnosis results in
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the display of diagnosis options, we fail to see how a single diagnosis
discloses a diagnoses group.
In view of the foregoing, the Examiner has not sufficiently shown that
Pak discloses "presenting ... a plurality of diagnoses groups in response to
said providing entity accessing said treatment request, wherein a diagnosis
group of said diagnoses groups comprises a plurality of diagnoses that are
grouped together according to types of skin conditions," as recited in
independent claim 1. Independent claims 12 and 17 include limitations that
are similar to the disputed limitation of independent claim 1, and the
Examiner's rejection of independent claims 12 and 1 7 is based on the same
deficient finding. Final Act. 8, 11. We, therefore, do not sustain the
Examiner's rejection of independent claims 1, 12, and 17 and dependent
claims 2-5, 9, 11, 13, and 18.
The Examiner does not rely on Wong or Hoffner in any way that
cures the deficiency in the rejection of the independent claims. Final
Act. 15-18. Accordingly, we do not sustain the Examiner's rejections of
dependent claims 6-8, 10, 14--16, 19, and 20 for the same reasons as the
independent claims.
DECISION
The Examiner's decision to reject claims 1-20 under 35 U.S.C. § 101
is affirmed.
The Examiner's decision to reject claims 1-20 under 35 U.S.C.
§ 103(a) is reversed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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