Ex Parte Potts et al

Patent Trial and Appeal Board

Nov 29, 2017

13215670 (P.T.A.B. Nov. 29, 2017)

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.
13/215,670 08/23/2011 Thomas John Potts 108135.00101 2649
29880 7590 12/01/2017
FOX ROTHSCHILD LLP
PRINCETON PIKE CORPORATE CENTER
997 LENOX DRIVE
BLDG. #3
EAWRENCEVTT.TE, NJ 08648
EXAMINER
NGUYEN, TRAN N
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
12/01/2017 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):
ipdocket @ foxrothschild. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS JOHN POTTS and THOMAS IAN POTTS
Appeal 2016-005396
Application 13/215,670
Technology Center 3600
Before ST. JOHN COURTENAY III, DENISE POTHIER, and
JASON REPKO, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1—10, which are all the claims pending in this application. Claims
11—20 are withdrawn. We have jurisdiction over the pending claims under
35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
Introduction
Appellants’ invention relates to “[a] controlled substance distribution
system may include a controlling entity having a database.” (Spec.,
Abstract).
Appeal 2016-005396
Application 13/215,670
Exemplary Claim
Claim 1 is exemplary of the invention and reads as follows.
1. A controlled substance distribution system, comprising:
a first computing device associated with a controlling entity,
wherein the first computing device comprises a database,
wherein the database comprises data;
a first computer-readable storage medium in communication
with the first computing device;
a patient token having a unique patient identifier, wherein the
data in the database includes data that is associated with the
unique patient identifier; and
a dispensing center comprising a second computing device in
communication with the first computing device; and
a second computer-readable storage medium in communication
with the second computing device,
wherein the data comprises:
data associated with a patient,
an authorized amount equal to an amount of a
controlled substance that the patient is authorized
to receive via disbursement from one or more
authorized dispensing entities during a time period,
and
a received amount equal to an amount of the
controlled substance that the patient has already
received during the time period,
wherein the first computer-readable storage medium
comprises one or more programming instructions that,
when executed, cause the first computing device to:
receive the unique patient identifier and a request
for the controlled substance from the second
computing device, wherein the request comprises a
requested controlled substance and a requested
amount of the requested controlled substance,
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Application 13/215,670
determine whether the request is allowed by
determining whether a sum of the requested
amount and the received amount exceeds the
authorized amount,
if the sum of the requested amount and the
received amount exceeds the authorized amount,
deny the request, otherwise, allow the request, and
send an indication of whether the request is
allowed to the second computing device
wherein the second computer-readable storage medium
comprises one or more programming instructions that,
when executed, cause the second computing device to:
receive, from the first computing device, the
indication of whether or not the request is allowed,
and
authorize a dispensing event in response to the
request only if the indication indicates that the
request is allowed.
Rejection
Claims 1—10 are rejected under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter (Final Act. 2—4).
Issue on Appeal
Did the Examiner err in rejecting claims 1—10 under 35 U.S.C. § 101
as being directed to patent-ineligible subject matter?
ANALYSIS
Rejection of Claims 1—10 under 35 U.S.C. § 101
Under 35 U.S.C. § 101, a patent may be obtained for “any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof.” The Supreme Court has “long held that
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Application 13/215,670
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable.” Alice Corp. v.
CLS BankInt 7, 134 S. Ct. 2347, 2354 (2014) (quoting Ass’n for Molecular
Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013)).
The Supreme Court in Alice reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 132 S. Ct. 1289, 1300 (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.
The first step in that analysis is to determine whether the claims at
issue are directed to one of those patent-ineligible concepts, such as an
abstract idea. Abstract ideas may include, but are not limited to,
fundamental economic practices, methods of organizing human activities,
an idea of itself, and mathematical formulas or relationships. Id. at 2355—57.
If the claims are not directed to a patent-ineligible concept, the inquiry
ends. Otherwise, the inquiry proceeds to the second step where the elements
of the claims are considered “individually and ‘as an ordered combination’
to determine whether the additional elements ‘transform the nature of the
claim’ into a patent-eligible application.” Id. at 2355 (quoting Mayo, 132 S.
Ct. at 1298, 1297).
We, therefore, look to whether the claims focus on a specific means
or method that improves the relevant technology, or instead are directed to
a result or effect that itself is the abstract idea, and merely invokes generic
processes and machinery. See Enfish, LLC v. Microsoft Corp., 822 F.3d
1327, 1336 (Fed. Cir. 2016).
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Step 1 —Alice!Mayo Analysis
Turning to the first part of the Alice!Mayo analysis, the Examiner
concludes the claims are directed to an abstract idea, i.e., merely organizing
human activities. (Final Act. 3). Further, the Examiner finds Appellants’
claimed invention is implemented using a generic, general purpose computer
system. (Final Act. 3—4).
Regarding A lice Step 1, Appellants contend, inter alia:
Similarly, in this case the Office Action’s
characterization of a controlled substance distribution as a
method of organizing human activities is a conclusory
statement and simply expresses the Examiner’s opinion. The
Office Action provides no evidentiary support for this assertion.
In fact, the Office Action fails to explain how the system of
claim 1, which requires two computing devices, two computer-
readable storage mediums, a patient token, a database and a
dispensing center qualifies as a method at all, let alone a
method of organizing human activities.
As such, the Office’s failure to provide any support for
its assertion contradicts the requirements of the Interim
Guidance, Board precedent, and the Supreme Court’s precedent
in Alice.
(App. Br. 9 (emphasis added in bold)).
At the outset, we agree with Appellants at least to the extent that
claim 1 is not a method claim. (Id.). Claim 1 is directed to “[a] controlled
substance distribution system” which comprises, inter alia, first and second
computers.
However, we note system or apparatus claim 1 also recites first and
second computer-readable mediums, which each contain programming
instructions to perform recited functions, which we conclude could also be
performed by a person as mental steps, or with the aid of pen and paper. Cf.
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CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir.
2011) (“a method that can be performed by human thought alone is merely
an abstract idea and is not patent-eligible under § 101.”).
We find Appellants’ argument (App. Br. 9) is essentially the same
argument advanced by Plaintiff—Appellant CyberSource, that the Federal
Circuit found unpersuasive:
CyberSource argues that claim 2 is patent-eligible per se
because it recites a “manufacture,” rather than a “process,”
under the statutory language of § 101. CyberSource
contends that, by definition, a tangible, man-made article
of manufacture such as a “computer readable medium
containing program instructions” cannot possibly fall within
any of the three patent-eligibility exceptions the Supreme
Court has recognized for “laws of nature, physical
phenomena, [or] abstract ideas.” Appellant's Br. 47—48
(quoting Bilski, 130 S.Ct. at 3225).
CyberSource, 654 F.3d at 1374 (bolding added).
The CyberSource court disagreed, declining to “exalt form over
substance.” (Id.). Instead, the court looked to the underlying invention for
patent-eligibility purposes: “Regardless of what statutory category
(“process, machine, manufacture, or composition of matter,” 35 U.S.C.
§ 101) a claim’s language is crafted to literally invoke, we look to the
underlying invention for patent-eligibility purposes.” (Id.) (emphasis
added).
Applying this reasoning here, we conclude the principal functions of
the underlying invention are performed by execution of the recited
programming instructions embodied on the first computer-readable
storage medium, which: (1) “receive the unique patient identifier and a
request for the controlled substance,” (2) “determine whether the request is
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allowed by determining whether a sum of the requested amount and the
received amount exceeds the authorized amount,” (3) further conditionally
deny or allow the request based upon a comparison, and (4) then, “send an
indication of whether the request is allowed to the second computing
device.” (Claim 1).
The programming instructions stored on the second computer-
readable storage medium similarly perform the recited functions of
“receiv[ing], from the first computing device, the indication of whether or
not the request is allowed, and authorizing] a dispensing event in response
to the request only if the indication indicates that the request is allowed.”
(Claim 1).
Based upon our review of the record, we agree with the Examiner that
“Appellants] claim[] a controlled substance distribution system, which
operates using only generic computers and other peripheral data
components.” (Ans. 3 (emphasis added)). For example, Claim 1 expressly
recites first and second computing devices. Also, as pointed out by the
Examiner (Final Act. 3), Appellants’ Specification, paragraph 9, expressly
describes that “[e]ach data entry station 22 may be [a] general purpose
computer.” (some emphasis omitted).
The Supreme Court guides: “the mere recitation of a generic computer
cannot transform a patent ineligible abstract idea into a patent-eligible
invention.” See Alice, 134 S.Ct. 2358. Applying this guidance to the claims
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presented here on appeal, we agree with the Examiner’s conclusion that
claims 1—10 are directed to an abstract idea.1
Step 2—Alice!Mayo Analysis
Because the claims are directed to an abstract idea, we turn to the
second part of the Alice!Mayo analysis. We analyze the claims to determine
if there are additional limitations that individually, or as an ordered
combination, ensure the claims amount to “significantly more” than the
abstract idea. Alice, 134 S. Ct. at 2357.
Regarding Alice, Step 2, Appellants urge that the Examiner has failed
to analyze the claims considered as a whole. (App. Br. 11). Appellants
contend, inter alia:
Claim 1 requires hardware elements such that the claims
analyzed as a whole amount to significantly more than an
abstract idea. For example, claim 1 requires two computing
devices, two computer-readable storage mediums, a database,
a patient token and a dispensing center. Moreover, claim 2
requires a packaging center data entry system, claim 4 requires
a token reader, and claim 7 requires a second token (a
caregiver token). These components define a very specific
controlled substance distribution system.
(App. Br. 11 (emphasis added)).
Appellants replicate thirty-five lines of claim limitations (App. Br.
12—13), and merely assert: “These steps involve much more than an abstract
idea. Instead, they are specific system components and processing steps.
1 To the extent Appellant has not advanced separate, substantive arguments
for particular claims, or other issues, such arguments are waived. See 37
C.F.R. §41.37(c)(l)(iv).
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The Office Action overlooks these significant elements in the claim.” (App.
Br. 13 (emphasis added)).
We particularly note Appellants expressly refer to “steps” (as in a
method) instead of “functions.” (Id.). Based upon our review of the record,
Appellants’ arguments do not persuade us the Examiner erred. Appellants
essentially recite claim limitations without any persuasive explanation of
how the limitations either individually, or as an ordered combination,
amount to an inventive concept that converts the abstract idea into patent-
eligible subject matter. (See App. Br. 12—13)
Nor have Appellants shown that the claims improve the functioning of
the computer itself, thereby to amount to significantly more than the
abstract idea of organizing human activities. Alice, 134 S. Ct. at 2356;
see also, e.g., BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC,
827 F.3d 1341, 1348 (Fed. Cir. 2016) (“An abstract idea on ‘an Internet
computer network’ or on a generic computer is still an abstract idea.”); Elec.
Power Grp., LLCv. Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016) (“We
have repeatedly held that such invocations of computers and networks that
are not even arguably inventive are insufficient to pass the test of an
inventive concept in the application of an abstract idea”) (internal quotations
omitted).
Nor do we find Appellants’ claims similar to the type of claim
considered by the court in DDR Holdings, LLC v. Hotels.com, 773 F.3d
1245 (Fed. Cir. 2014). In contrast to the claimed invention in DDR, we
conclude Appellants’ claimed solution is not rooted in computer technology,
such that the invention on appeal overcomes a problem specifically arising
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in the realm of computer networks, as was the case presented in DDR.
Id. at 1257.
Further, we conclude Appellants’ claimed non-specific “database
[that] comprises data” (claim 1) is distinguished from the type of claim
upheld by the Federal Circuit as being directed to an improved database
architecture, i.e., a self-referential table: “a specific type of data structure
designed to improve the way a computer stores and retrieves memory.”
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016)
(emphasis added).
Therefore, on this record, we conclude that none of the claim
limitations, viewed “both individually and as an ordered combination,”
amount to significantly more than the judicial exception in order to
sufficiently transform the nature of the claims into patent-eligible subject
matter. See Alice, 134 S. Ct. at 2355 (quotations omitted) (quoting Mayo,
132 S. Ct. at 1297).
For at least the aforementioned reasons, and on this record, Appellants
have not persuaded us the Examiner erred. Accordingly, we sustain the
Examiner’s rejection under 35 U.S.C. § 101 of all claims 1—10 on appeal.
See n. 1, supra.
Reply Brief
To the extent Appellants advance new arguments in the Reply Brief,
not in response to a shift in the Examiner’s position in the Answer, we note
arguments raised in a Reply Brief that were not raised in the Appeal Brief or
are not responsive to arguments raised in the Examiner’s Answer will not be
considered except for good cause. See 37 C.F.R. § 41.41(b)(2).
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CONCLUSION
The Examiner did not err in rejecting claims 1—10 under 35 U.S.C.
§ 101 as being directed to patent-ineligible subject matter.
DECISION
We affirm the decision of the Examiner rejecting claims 1—10 under
35 U.S.C. § 101.
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). See 37
C.F.R. § 41.50(f).
AFFIRMED
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