Ex Parte SMITH

Patent Trial and Appeal Board

Aug 13, 2018

13354219 (P.T.A.B. Aug. 13, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/354,219 01/19/2012 DOUGLAS K. SMITH
120775 7590 08/15/2018
Rocky Mountain Patent LLC
1800 Wazee St., Suite 300
Denver, CO 80202
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.
SmithD-3-1 8900
EXAMINER
TIEDEMAN, JASON S
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
08/15/2018 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):
kbennett@rockymountainpatent.com
j schell@rockymountainpatent.com
patents@rockymountainpatent.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DOUGLAS K. SMITH
Appeal2017-005758
Application 13/354,219
Technology Center 3600
Before JOHN A. JEFFERY, JOHNNY A. KUMAR, and CATHERINE
SHIANG, Administrative Patent Judges.
JEFFERY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 11 and 36. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm.
STATEMENT OF THE CASE
Appellant's invention provides radiologic practice workflow for plural
participants that uses (1) a health administration server, (2) a layered
interoperability gateway, and (3) a radiologic referral communication
network that receives information shared from plural participants, and
1 Appellant identifies the real party in interest as Virtual Viewbox Inc. App.
Br. 3.
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Application 13/354,219
provides that information to the layered interoperability gateway. A
referring physician generates a patient preorder workfile with a dashboard
responsive to a patient need. After a physician order is entered, the patient
preorder workfile is interfaced with an electronic records system. See
generally Abstract; Spec. ,r,r 33--45. Claim 11 is illustrative:
11. A method of providing radiologic practice workflow for
a plurality of participants including a referring physician and a
radiologist comprising the steps of:
providing a radiology communications network referral
system including a health administration server, a layered
interoperability gateway coupled to the health administration
server, and a radiologic referral communications network
coupled to the interoperability gateway,
the radiologic referral communications network
receiving participant-shared information from the
plurality of participants and providing the participant-
shared information to the
layered interoperability gateway,
the participant-shared information including
shared data input, the shared data input
constituting ratings and reviews for the plurality of
participants in the radiology communications
network referral system,
the health administration server
processing the participant-shared
information,
the processing based on a
patient need inputted by the plurality
of participants for a medical event
experienced by a corresponding
patient,
transferring participant-
shared information processed
by the health administration
server to the referring
physician, wherein the
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interoperability gateway
converts data collected through
a radiological referral social
network to the HL 7 protocol,
the referring physician reviewing the
processed participant-shared information received
from the health administration server, the health
administration server including a group function, a
preorder renderer, a regulation function and a
group application function, the group application
function providing a radiologic referral
communications network to the preorder renderer,
the radiologic referral
communications network including a
predefined range display of the participant-
shared information,
the predefined range display
including at least a subset of
information shared by the plurality of
participants having the shared data
input derived,
communicatively coupling the group application
function to a real time augmentor,
the group application function providing at
least one dashboard as a graphical user interface
displayed to the plurality of participants for
construction of a patient preorder workfile,
comprising instructions associated with medical
examinations, medical studies, or medical
treatments intended for the patient,
the at least one dashboard displaying
the predefined range display having the
shared data input,
continuously refreshing the
shared data input by the real time
augmentor provided by the group
application function;
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sending and receiving, via the group application function,
the participant-shared information from the radiologic referral
communications network to the preorder renderer, and
supplying, from the radiologic referral
communications network to the preorder renderer, the
participant-shared information including shared data
input from participants within the radiologic referral
communications network;
receiving input via the dashboard from the referring
physician during the construction of a patient preorder workfile
and filtering the radiologic referral communications network
via the regulation function based on the filtered input;
the referring physician input providing instructions
associated with medical examinations, medical studies, or
medical treatments based on the patient need for a medical
event experienced by the corresponding patient,
the preorder renderer facilitating display of the at
least one dashboard with the regulation function,
the at least one dashboard providing, at least
in part, access to the patient preorder workfile;
updating, in real time, the shared data input received at
the group application function of the remote radiologic referral
communications network system with the real time augmentor;
generating, via the referring physician in response to
input received from the referring physician with the at least one
dashboard in response to a patient need, the patient preorder
workfile with the preorder renderer; and
integrating the patient preorder workfile with a
computerized physician order entry, receiving a second
input from a referring physician in response to a patient
need via the at least one dashboard and generating with
the preorder renderer, in response to the input, the patient
preorder workfile; and
generating an invitation message from a patient preorder
workfile inviting one or more participants to respond,
optionally configuring the invitation message to
permit the supervising participant to select the
participants that are subsequently receiving the invitation
message,
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sending said invitation message to at least
one supervising participant of a request subgroup,
the request subgroup including the one or more
participants,
the at least one supervising participant
recipient optionally changing the particular
participants that subsequently receive said
invitation message,
the at least one supervising
participant recipient optionally
configuring the invitation message to
permit the at least one participant to
block participants from receiving
future invitation messages,
receiving acceptance or denial of the
invitation message from potential
participants and, if acceptance is received,
adding the accepting additional potential
participants to the participants;
establishing a network connection with the radiologic
referral communications network via the patient preorder
workfile among a subset of the referring physician and the
participants within the radiologic referral communications
network to form a request workgroup consisting of a subset of
the participants.
THE REJECTION
The Examiner rejected claims 11 and 36 under 35 U.S.C. § 101 as
directed to ineligible subject matter. Final Act. 2--4. 2
2 Throughout this opinion, we refer to (1) the Final Rejection mailed
February 24, 2016 ("Final Act."); (2) the Appeal Brief filed August 22, 2016
("App. Br."); (3) the Examiner's Answer mailed December 20, 2016
("Ans."); and (4) the Reply Brief filed February 20, 2017 ("Reply Br.").
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FINDINGS AND CONTENTIONS
The Examiner finds that the claimed invention is directed to an
abstract idea analogous to abstract ideas that the Federal Circuit has
recognized, including (1) an idea of itself; (2) comparing new and stored
information and using rules to identify options; (3) classifying and storing
information in an organized manner; and ( 4) receiving information,
characterizing the information based on identifiers, and communicating the
characterization. See Final Act. 2-3; Ans. 5---6. According to the Examiner,
the claimed elements do not add significantly more to the abstract idea to
render the claimed invention patent-eligible. Final Act. 3--4; Ans. 6-17.
Appellant argues that the claimed invention improves an existing
technological field and, therefore, is not directed to an abstract idea. App.
Br. 16-21. According to Appellant, the claimed invention improves the way
information is communicated through a communication system by reciting,
among other things, a layered interoperability gateway that facilitates
communication between varied protocols that is said to improve how
medical record information is (1) collected, (2) transformed into appropriate
formats, and (3) disseminated to appropriate physicians. App. Br. 16-21,
24--26; Reply Br. 4--7. This functionality is said to allow physicians to use
different systems in disparate locations to interact with health information
securely and compliantly, and update that information in real time. App. Br.
16-21, 24--26; Reply Br. 4--7.
Appellant also contends that even if the claims were directed to an
abstract idea, the claims recite an inventive concept that adds significantly
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more to the abstract idea by reciting more than a generic computer
performing routine and conventional functions. App. Br. 26-29; Reply Br.
9-11. The claimed invention is also said to not preempt others in the field.
App. Br. 29-30.
ISSUE
Has the Examiner erred in rejecting claims 11 and 36 by concluding
that it is directed to ineligible subject matter under § 101? This issue turns
on whether the claimed invention is directed to a patent-ineligible abstract
idea and, if so, whether the claim's elements----considered individually and
as an ordered combination-transform the nature of the claim into a patent-
eligible application of that abstract idea.
ANALYSIS
Claim 11
To determine whether claims are patent eligible under § 101, we apply
the Supreme Court's two-step test articulated in Alice Corp. Proprietary Ltd.
v. CLS Bank International, 134 S. Ct. 234 7 (2014 ). First, we determine
whether the claims are directed to a patent-ineligible concept: laws of nature,
natural phenomena, and abstract ideas. Id. at 2354--55. If so, we then
proceed to the second step and examine the claim's elements-both
individually and as an ordered combination-to determine whether the claim
contains an "inventive concept" sufficient to transform the claimed abstract
idea into a patent-eligible application. Id. at 2357.
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Alice Step One
Applying Alice step one, we agree with the Examiner that the claimed
invention is directed to an abstract idea, namely generating, updating, and
exchanging information with recipients via a network. See Final Act. 2-3;
Ans. 3-6. Independent claim 11 recites, in pertinent part, a method of
providing radiologic practice workflow for plural participants that uses (1) a
"health administration server"; (2) a "layered interoperability gateway"; and
(3) a "radiologic referral communications network" to receive information
shared from plural participants, and provide that information to the layered
interoperability gateway.
The recited health administration server (1) processes the participant-
shared information for a medical event experienced by a patient, and (2)
transfers that information to a referring physician via the layered
interoperability gateway that converts data collected through a radiologic
referral social network to the HL 7 protocol. 3 The health administration
server's group application function provides a radiologic referral
communication network to the server's "preorder renderer," where the
network includes a predefined range display of participant-shared
information including at least a subset of shared information.
The health administration server's group application function is (1)
communicatively coupled to a "real-time augmentor,"4 and (2) provides a
dashboard as a graphical user interface displayed to participants to construct
3 HL 7 is an application layer protocol administered by Health Level Seven,
Inc. for health informatics that includes exchanging, managing, and
integrating electronic healthcare information. Spec. ,r 55.
4 Although the term "real time augmentor" is not hyphenated in Appellant's
disclosure, we nonetheless hyphenate it for clarity and grammatical form.
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a "patient preorder workfile" 5 with instructions associated with a patient's
intended medical examinations, studies, or treatments. The dashboard
displays the predefined range display with the shared data input that is
refreshed continuously by the real-time augmentor.
The health administration server's group application function also
sends and receives participant-shared information from the radiologic
referral communication network to the server's preorder renderer, where this
information includes shared data input from participants within the network.
Claim 11 further recites that input is received from a referring
physician via the dashboard during construction of a patient preorder
workfile, and filtering the radiologic referral communication network via the
health administration server's regulation function based on filtered input.
The preorder renderer facilitates displaying the dashboard with the
regulation function, where the dashboard provides access to the patient
preorder workfile.
Claim 11 's method also ( 1) updates, in real time, shared data received
at the group application function with the real-time augmentor, and (2)
generates a patient preorder workfile with the preorder renderer responsive
to input received from a referring physician with the dashboard responsive to
patient need.
5 A "patient preorder workfile" is an application in a computer-readable
format that is responsive to commands and information provided by a health
administration server that is linked with a social network radiology referral
system. Spec. ,r 30. In one embodiment, a patient preorder workfile
includes the "ERXRA Y" brand software suite manufactured by
Musculoskeletal Imaging Consultants of Texas. Id.
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An invitation message is also generated from the patient preorder
workfile inviting participants to respond, where the message can be
optionally configured to permit a supervising participant to (1) select
participants that later receive the message, (2) change participants that
received the message, and (3) block participants from receiving future
invitation messages. If an acceptance of the invitation is received, the
accepting participants are added to the participants.
Also, claim 11 's method establishes a network connection with the
radiologic referral communication network via the patient preorder workfile
among a subset of the referring physician and the participants to form a
request workgroup consisting of a subset of participants.
In essence, the claimed invention shares medical information among
certain participants via a communications network. Despite Appellant's
arguments to the contrary (App. Br. 15-26; Reply Br. 3-9), we agree with
the Examiner that claim 11 is directed to an abstract idea. Final Act. 2-3;
Ans. 3-14.
It is well settled that collecting information is within the realm of
abstract ideas----even when the information is limited to particular content.
Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir.
2016). It is also well settled that analyzing information by steps people go
through in their minds, or by mathematical algorithms, without more, are
essentially mental processes within the abstract idea category. Id. at 1354.
And 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.
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Similar to the claims at issue in Electric Power, the claimed invention
here gathers, manipulates, analyzes, and presents information of a specified
content, namely medical information, but does not use any particular
inventive technology for performing those functions. And, as the Examiner
explains, the recited functions could be performed manually despite using a
computer system to do so. See Ans. 4.
We find unavailing Appellant's contention that the claimed invention
improves the way information is communicated through a communication
system by reciting, among other things, a layered interoperability gateway
that facilitates communication between varied protocols that is said to
improve how medical record information is (1) collected, (2) transformed
into appropriate formats, and (3) disseminated to appropriate physicians.
App. Br. 16-21, 24--26; Reply Br. 4--7.
Nevertheless, the claimed invention's medical data collection and
dissemination functions are analogous to the computer-based dissemination
of patient treatment information that the Federal Circuit has held as
ineligible. See SmartGene, Inc. v. Adv. Biological Labs., SA, 555 F. App'x
950, 951-56 (Fed. Cir. 2014) (unpublished) (holding ineligible a method that
guided selecting a patient's treatment regimen by generating advisory
information in a ranked listing of available treatment regimens from a
knowledge base based on patient information and expert rules); see also In
re Salwan, 681 F. App'x 938, 938--41 (Fed. Cir. 2017) (unpublished)
(holding ineligible a method of transferring patient health information
among healthcare user groups or patients via a network by, among other
things, selectively retrieving stored electronic medical record information,
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generating healthcare reports, and transmitting the reports to authorized
healthcare user groups or the patient for review).
To be sure, claim 11 recites, among other things, a layered
interoperability gateway coupled to a health administration server and a
radiologic referral communication network, where the gateway converts
collected data to the HL 7 protocol. See Spec. ,r 36. As the Specification's
paragraph 52 explains, the layered interoperability gateway joins varied
protocols of each radiologic referral communication network 50, 50', 50"
with the health administration server 9 while ensuring privacy. To this end,
the layered interoperability gateway 30 includes three layers that facilitate
the health administration server's interoperability with records formatted
using different protocols: (1) Integrating Healthcare Enterprise (IHE)
initiative interoperability layer 31; (2) Digital Imaging and Communications
in Medicine (DICOM) interoperability layer 33; and (3) HL7 interoperability
layer 35. See Spec. ,r,r 53-55; Fig. la.
Despite this gateway-based interoperability, the claimed invention
does not solve a technical problem or otherwise improve a computer's
operation by, for example, improving its speed and efficiency, but rather
merely applies generic computer components to perform otherwise manual
functions faster and more accurately-automation that is the very purpose of
computers. 6 The Examiner's point in this regard is well taken. See Ans. 3-
4.
6 See MICROSOFT COMPUTER DICTIONARY 44 (5th ed. 2002) (defining
"Automation," in pertinent part, as "[t ]he implementation of a mechanical or
electronic system or tool to automatically complete a task, thereby reducing
or eliminating human intervention.").
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Nor are we persuaded that the claimed invention improves the recited
computer components' functionality or efficiency, or otherwise changes the
way those devices function, at least in the sense contemplated by the Federal
Circuit in Enfish LLC v. Microsoft Corporation, 822 F.3d 1327 (Fed. Cir.
2016), despite Appellant's arguments to the contrary (App. Br. 24--25; Reply
Br. 5). The claimed self-referential table in Enfish was a specific type of
data structure designed to improve the way a computer stores and retrieves
data in memory. Enfish, 822 F.3d at 1339. To the extent that Appellant
contends that the claimed invention uses such a data structure to improve a
computer's functionality or efficiency, or otherwise change the way that
device functions (see App. Br. 24--25; Reply Br. 5), there is no persuasive
evidence on this record to substantiate such a contention.
That the recited interoperability gateway converts data to a particular
format does not change our conclusion, for such format conversions are
generic computing functionality, nor does the claim specify how this generic
computer component achieves this functional result in a non-abstract way.
Cf Clarilogic, Inc. v. FormFree Holdings Corp., 681 F. App'x 950, 951-55
(Fed. Cir. 2017) (holding ineligible claims directed to providing financial
data including transforming electronically-collected financial data into a
desired format); Two-Way Media Ltd. v. Comcast Cable Comm 'ns, LLC, 874
F.3d 1329, 1337-38 (Fed. Cir. 2017) (noting that claim reciting functional
results of "converting," "routing," "controlling," "monitoring," and
"accumulating records" did not describe sufficiently how to achieve these
results in a non-abstract way); Easy Web Innovations, LLC v. Twitter, Inc.,
689 F. App'x 969, 970-71 (Fed. Cir. 2017) (unpublished) (holding ineligible
claims directed to publishing format-converted portions of received
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messages as directed to an abstract idea of receiving, authenticating, and
publishing data).
That the claimed invention updates and refreshes shared data input in
real time also does not render the claims non-abstract despite the
Specification's definition of "real time" with respect to "a computer system
that constantly updates information at the same rate as the system receives
data, and processes data sufficiently rapidly to be able to control a process."
Spec. ,r 30. But such real-time computer-based processes do not impart
eligibility to claims that are otherwise ineligible, as is the case here. See
Two-Way Media, 874 F.3d at 1340 (holding claims directed to monitoring
delivery of real-time information to users or measuring such delivery as
directed to an abstract idea); see also id. (citing Elec. Power, 830 F.3d at
1351-53 (noting that collecting information, analyzing it, and displaying
results is an abstract idea, even when undertaken in real time)).
We, therefore, agree with the Examiner that the claimed invention is
directed to an abstract idea.
Alice Step Two
Turning to step two of the Alice framework, we find that the recited
elements----considered individually and as an ordered combination----do not
transform the nature of the claimed invention into a patent-eligible
application of the abstract idea to ensure that the claimed invention amounts
to significantly more than that idea. See Alice, 134 S. Ct. at 2357.
That the recited method provides radiologic practice workflow in
claim 11 's preamble does not change our conclusion. We reach the same
conclusion regarding the recited interactions and data flows between the
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recited health administration server, layered interoperability gateway, and
radiologic referral communication network that receives information shared
from plural participants, and provides that information to the layered
interoperability gateway.
As the Examiner indicates, the claimed invention merely uses generic
computing components to perform well-understood, routine, and
conventional functions, including a variety of data processing and
manipulation functions indicated by the Examiner. See, e.g., Ans. 8, 12, 15
(finding that the recited layered interoperability gateway can not only be a
server-based software module, but also a well-known, general-purpose
hardware gateway that performs well-understood, routine, and conventional
gateway functions); see also Ans. 12-13 (finding that the recited health
administration server is a well-known general-purpose computer).
That the claimed invention uses a network to exchange data is of no
consequence here, for it is well settled that such network-based limitations
do not add significantly more to the abstract idea. See Mortgage Grader Inc.
v. First Choice Loan Services, Inc., 811 F.3d 1314, 1324--25 (Fed. Cir.
2016) (noting that components such an "interface," "network," and
"database" are generic computer components that do not satisfy the
inventive concept requirement); see also Intellectual Ventures I LLC v.
Capital One Bank (USA), 792 F.3d 1363, 1370 (Fed. Cir. 2015) ("[T]he
interactive interface limitation is a generic computer element"); buySAFE
Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) ("That a computer
receives and sends the information over a network-with no further
specification-is not even arguably inventive.").
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Nor do we find that the claimed invention's providing a dashboard as
a graphical user interface displayed to the participants for constructing a
patient preorder workfile adds significantly more to the abstract idea.
Merely reciting these generic computing components cannot transform a
patent-ineligible abstract idea into a patent-eligible invention. See Alice 134
S. Ct. at 2358-59; see also Mortgage Grader Inc. v. First Choice Loan
Services, Inc., 811 F.3d 1314, 1324--25 (Fed. Cir. 2016) (noting that
components such an "interface," "network," and "database" are generic
computer components that do not satisfy the inventive concept requirement).
That the recited method provides radiologic practice workflow ( as opposed
to other types of workflow) does not change our conclusion, for it is well
settled that merely limiting the field of use of an abstract idea does not
render the claims any less abstract. See Affinity Labs of Texas, LLC v.
DirecTV, LLC, 838 F.3d 1253, 1259 (Fed. Cir. 2016).
To the extent that Appellant contends that constructing a patient
preorder workfile somehow adds significantly more to the abstract idea (see
App. Br. 21, 28-29), we disagree. As noted previously, a patient preorder
workfile is an application in a computer-readable format that is responsive to
commands and information provided by a health administration server that is
linked with a social network radiology referral system. Spec. ,r 30. Notably,
in one embodiment, a patient preorder workfile includes the "ERXRA Y"
brand software suite manufactured by Musculoskeletal Imaging Consultants
of Texas. Id. This commercially-available computer software only
underscores the fact that constructing a patient preorder workfile merely
uses generic computer components to achieve that end.
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Nevertheless, even assuming, without deciding, that the recited
components add efficiency, any speed increase comes from the capabilities
of the generic computer components-not the recited process itself. See
Fair Warning IP, LLC v. Iatric Systems, Inc., 839 F.3d 1089, 1095 (Fed. Cir.
2016) (citing Bancorp Services, LLC v. Sun Life Assurance Co., 687 F.3d
1266, 1278 (Fed. Cir. 2012) ("[T]he fact that the required calculations could
be performed more efficiently via a computer does not materially alter the
patent eligibility of the claimed subject matter.")). Like the claims in
Fair Warning, the focus of the claimed invention is not on an improvement
in computer processors as tools, but on certain independently abstract ideas
that use generic computing components as tools. See FairWarning, 839
F .3d at 1095 ( citations and quotation marks omitted).
In short, merely reciting these generic computing components cannot
transform a patent-ineligible abstract idea into a patent-eligible invention.
Id. at 2358. In other words, merely reciting an abstract idea while adding the
words "apply it with a computer" does not render an abstract idea non-
abstract: there must be more. See Alice, 134 S. Ct. at 2358. Nor does the
claimed invention improve the computer processor device's functionality or
efficiency, or otherwise change the way that device functions. Cf Enfish
LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016).
Nor do we find that generating an invitation message from a patient
preorder workfile and sending the message as claimed adds significantly
more to the abstract idea. Cf Easy Web, 689 F. App'x at 970-71 (holding
ineligible claims directed to publishing format-converted portions of
received messages as directed to an abstract idea of receiving,
authenticating, and publishing data); buySAFE, 765 F.3d at 1355 ("That a
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computer receives and sends the information over a network-with no
further specification-is not even arguably inventive.").
We reach a similar conclusion regarding the recited filtering the
radiologic referral communication network via the regulation function. See
BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d
1341, 1348 (Fed. Cir. 2016) ("[F]iltering 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."); see also LendingTree,
LLC v. Zillow, Inc., 656 F. App'x 991, 992-97 (Fed. Cir. 2016)
(unpublished) (holding ineligible claims directed to a method and system for
coordinating between a computer user and plural lending institutions that
recited, among other things, filtering credit data to select certain
institutions).
To be sure, the court in BASCOM held eligible claims directed to a
technology-based solution to filter Internet content that overcame existing
problems with other Internet filtering systems by making a known filtering
solution-namely a "one-size-fits-all" filter at an Internet Service Provider
(ISP}--more dynamic and efficient via individualized filtering at the ISP.
BASCOM, 827 F.3d at 1351. This customizable filtering solution improved
the computer system's performance and, therefore, was patent-eligible. See
id.
But unlike the filtering system improvements in BASCOM that added
significantly more to the abstract idea in that case, the claimed invention
here uses generic computing components to implement an abstract idea,
namely filtering radiologic referral communication network via the health
administration server's regulation function. To the extent that Appellant
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contends that the recited filtering is similar to that in BASCOM to render the
claim patent-eligible, there is no persuasive evidence on this record to prove
such a contention.
We also find unavailing Appellants' contention the Examiner failed to
show that the claims preempt using the alleged abstract idea in all fields.
App. Br. 29-30. Where, as here, the claims cover a patent-ineligible
concept, preemption concerns "are fully addressed and made moot" by an
analysis under the Alice framework. See Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
For the foregoing reasons, then, the recited elements----considered
both individually and as an ordered combination----do not contain an
"inventive concept" sufficient to transform the claimed abstract idea into a
patent-eligible application. Therefore, we are not persuaded that the
Examiner erred in rejecting claim 11.
Claim 36
We also sustain the Examiner's rejection of claim 36 reciting, in
pertinent part, (1) appending the patient preorder workfile with an electronic
data file packet header, (2) generating the patient preorder workfile
independently of a DI COM formatted file, and (3) merging a patient
preorder workfile with a separate DICOM indexed file.
First, although Appellant notes these particular limitations in
connection with the eligibility argument on page 21 of the Appeal Brief,
Appellant does not provide the requisite subheading to indicate clearly and
unambiguously that claim 36 is argued separately-a regulatory
requirement. See 37 C.F.R. § 4I.37(c)(l)(iv) ("Under each heading
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Application 13/354,219
identifying the ground of rejection being contested, any claim(s) argued
separately or as a subgroup shall be argued under a separate subheading that
identifies the claim( s) by number.") ( emphasis added); see also MANUAL OF
PATENT EXAMINING PROCEDURE (MPEP) § 1205.02 (9th ed. Rev. 08.2017,
Jan. 2018) (explaining this rule). Therefore, to the extent that Appellant
intends to argue the eligibility of claim 36 separately, such arguments are
waived.
But even if such arguments were properly presented (which they were
not), we still find them unpersuasive. On page 21 of the Appeal Brief,
Appellant merely quotes the limitations of claim 36 and alleges that they
improve how information is distributed through a computer system. This
mere allegation, without more, does not persuasively rebut the Examiner's
findings and conclusions in the eligibility rejection and the Answer that
these and other recited limitations are directed to generic computer
functionality that does not add significantly more to the abstract idea. See
Final Act. 3--4; Ans. 3-17.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 36.
CONCLUSION
The Examiner did not err in rejecting claims 11 and 36 under§ 101.
DECISION
We affirm the Examiner's decision to reject claims 11 and 36.
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).
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Appeal2017-005758
Application 13/354,219
AFFIRMED
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