Ex Parte Vann

Patent Trial and Appeal Board

May 25, 2018

13478594 (P.T.A.B. May. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/478,594 05/23/2012
23589 7590 05/30/2018
Hovey Williams LLP
10801 Mastin Blvd., Suite 1000
Overland Park, KS 66210
FIRST NAMED INVENTOR
Robert E. Vann JR.
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.
43002 5886
EXAMINER
THAI, XUAN MARIAN
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
05/30/2018 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):
uspatents@hoveywilliams.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT E. VANN JR.
Appeal2017-009754
Application 13/478,594
Technology Center 3700
Before MICHAEL L. HOELTER, MICHELLE R. OSINSKI, and
LISA M. GUIJT, Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
rejection2 of claims 1-13, 15, 19, and 20 under 35 U.S.C. § 101. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
Claims 1 and 12 are the independent claims on appeal. Claim 1,
reproduced below, is exemplary of the subject matter on appeal.
1 Appellant identifies the real party in interest as MedProdigy, Inc. Br. 5.
2 Appeal is taken from the Final Office Action dated Aug. 12, 2015.
Appeal2017-009754
Application 13/478,594
1. A non-transitory computer readable storage medium with
an executable program stored thereon for providing access to
medical treatment information via an electronic resource wherein
the program instructs a processor to perform the following steps:
compile medical reference material accessible via the
electronic resource, wherein said medical reference material
comprises information related to all of the following: diagnoses,
treatment options, common complications, patient education,
and lectures;
compile supplier solution material accessible via the
electronic resource, wherein said supplier solution material
comprises information related to all of the following:
pharmaceutical products, medical equipment, medical devices,
and reference articles;
compile a patient version of the medical reference material
accessible via the electronic resource, wherein the patient version
of the medical reference material comprises information related
to all of the following: a patient version of treatment options and
a patient version of lectures;
provide a medical reference mode, a continuing education
mode, and a compliance mode;
provide options to a user to view medical treatment
information in any and all of said medical reference mode,
continuing education mode, and compliance mode;
receive information indicative of a selection from the user
to view medical treatment information in one of said medical
reference mode, continuing education mode, and compliance
mode;
display both the medical reference material and the
supplier solution material upon receipt of the user's selection to
view medical treatment information in the medical reference
mode;
display, in the medical reference mode, portions of the
medical reference material according to a particular medical
issue being focused on by the user;
display, in the medical reference mode, portions of the
supplier solution material that are directly relevant to the
particular medical issue being focused on by the user and the
portions of the medical reference material being displayed;
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Application 13/478,594
list, in the medical reference mode, supplier solutions from
the supplier solutions material in a linkable display format;
display only the medical reference material and do not
display the supplier solution material upon receipt of the user's
selection to view medical treatment information in the
continuing education mode such that only a portion of
information displayed in the medical reference mode is displayed
in the continuing education mode;
display only the patient version of the treatment options
and the patient version of the lectures upon receipt of the user's
selection to view the medical treatment information in the
compliance mode.
ANALYSIS
Appellant argues claims 1-13, 15, 19, and 20 as a group. We select
claim 1 as representative, with claims 2-13, 15, 19, and 20 standing or
falling with claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv).
The Supreme Court has set forth a two-step framework for
determining whether claimed subject matter is judicially-excepted from
patent eligibility under 35 U.S.C. § 101. Alice Corp. Pty. Ltd. v. CLS Bank
Int'!, 134 S. Ct. 2347, 2355 (2014) (citing Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 132 S. Ct. 1289, 1294 (2012)). Accordingly, we
must first "determine whether the claims at issue are directed to one of those
patent-ineligible concepts"-i.e., a law of nature, a natural phenomenon, or
an abstract idea. Id. If so, we secondly "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." Id. (quoting Mayo, 132 S. Ct. at 1298, 1297). The Supreme
Court has described the second part of the analysis as "a search for an
'inventive concept'-i.e., an element or combination of elements that is
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Application 13/478,594
'sufficient to ensure that the patent in practice amounts to significantly more
than a patent upon the [ineligible concept] itself."' Id. (alteration in original)
(quoting Mayo, 132 S. Ct. at 1294).
Applying the first step of the Alice/Mayo framework-and
notwithstanding that claim 1 recites statutmy subject matter (i.e., an
apparatus (see Ans. 2)), the Examiner determines that claim 1 is judicially-
excepted from patent eligibility under 35 U.S.C. § 101, because claim 1 is
directed to an abstract idea, and specifically, an idea of itself: "collecting
ir?formation, anazyzing it, and . .. dic\playing certain results of the
collection." Id. at 3 (citing Elec. Pm•./er Grp., LLC v. Alstrom S.A., 830 F.3d
1350, 1353, 1354 (Fed. Cir. 2016) (holding that "[c]o1lecting information,
including when lirnited to a particular content" is an abstract idea and also
that "merely presenting the result of abstract processes of collecting
infon11ation, without more ... is abstract as an ancillary paii of such
collection and analysis"); cf Final Act. 2 (wherein the Examiner determines
that claim I is directed to "the abstract idea of a certain method of
organizing the human activity of learning"). The Examiner determines that
the claimed medical treatment information is "collected information which is
analyzed and displayed according to the user's mode selection (reference,
continuing education or compliance mode)." Ans. 2.
Appellant argues that "[t]he Examiner has failed to provide a prima
facie case that [the claims] are directed to a non-statutory subject matter."
Br. 20. In support, Appellant submits that "[t]he Examiner has not provided
any objective evidence that the alleged abstract idea is fundamental [(i.e.,
directed towards fundamental building blocks or the basic tools of scientific
or technological work)]." Id. at 21. Appellant further argues that
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Application 13/478,594
[t]he Examiner also failed to consider each claim element ...
[and] to explain: (1) which claim elements are considered
abstract, (2) why these claim elements are considered abstract,
and (3) why the additional elements or combinations of elements
other than the abstract idea are believed to amount to "no more
than: mere instructions to implement the idea on a computer."
id. at 20.
\Ve determine that the Examiner has set forth the statutory basis of the
rejection in a sufficiently articulate and informative manner as to meet the
notice requirement of 35 U.S.C. § 132, and therefore, the Examiner has set
forth a prima facie case of patent ineligibility. See In re Jung, 637 F.3d
1356, 1362 (Fed. Cir. 2011) (The USPTO carries its procedural burden of
establishing a prima facie case when its rejection satisfies the requirements
of 35 U.S.C. § 132 by notifying the applicant of the reasons for rejection,
"together with such information and references as may be useful in judging
of the propriety of continuing the prosecution of [the] application."). \Ve are
also not persuaded by Appellant's argument that the Examiner rnust provide
evidentiary support (i.e., that the abstract idea identified by the Examiner is
fundamental), before a conclusion can be made that a claim is directed to an
b . l .-., l'Sl)"I-'O' J 2 ~ '1014 "TJ 1· . T, . . a. stract 1c ea. 0ee ; 1 s. une :,, L., ire 1mmary exammat10n
Instructions in view of the Supreme Court Decision in Alice Corporation
P(y. Ltd. v. CLS~ Bank International, et al. "; see also, e.g., para. IV "July
2015 Update: Subject Matter Eligibility" to 2014 Interim Guidance on
Subject Matter Eligibility (2014 IEG), 79 Fed. Reg. 74618 (Dec. 16, 2014)
("The courts consider the determination of whether a claim is eligible ( which
involves identifying whether an exception such as an abstract idea is being
claimed) to be a question of law. Accordingly, courts do not rely on
evidence that a claimed concept is a judicial exception, and in most cases
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resolve the ultimate legal conclusion on eligibility without making any
factual findings." (Emphasis added) (Footnote omitted)). \Ve address
whether a claim element ( or combination of elements) amounts to
significantly more than a patent upon the ineligible concept itself infra, with
respect to the second step of the Alice/Mayo framework.
Appellant also argues that, in Alice Cm7J., "[the] use of the term
'abstract idea' refers to concepts that are long prevalent, fundamental, and
essential to an area of science or commerce" and that "[ a] claim is not patent
ineligible merely because it is related to the field of organizing human
activity." Br. 21. However, Appellant's argument fails to address the
Examiner's determination that claim 1 is directed to the abstract idea of
collecting and analyzing data, as set forth supra, or put another way, that
clairn 1 is directed to an abstract idea itse{[:
Moreover, claim 1 is similar to claims directed to the collection,
organization, and manipulation of data that our reviewing court has found to
be directed to patent-ineligible abstract ideas. For example, in Electric
Power Group, the court held that claims drawn to systems and methods for
performing real-time performance monitoring of an electric power grid by
collecting data from multiple data sources, analyzing the data, and
displaying the results were directed to the abstract idea of "collecting
information, analyzing it, and displaying certain results of the collection and
analysis." 830 F.3d at 1352, 1353. Similarly, in Content Extraction &
Transmission LLC v. Wells Fargo Bank, National Ass 'n, 776 F.3d 1343
(Fed. Cir. 2014), the court held that claims generally reciting "a method of
1) extracting data from hard copy documents using an automated digitizing
unit such as a scanner, 2) recognizing specific information from the
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extracted data, and 3) storing that information in a memory," were drawn to
an abstract idea. Id. at 1345, 1347.
Thus, we are not apprised of error in the Examiner's determination
that claim 1 is directed to the abstract idea of collecting and analyzing data
(i.e., medical treatment information), and displaying the data according to
user mode selections.
Applying the second step of the Alice/1v1ayo framework, the Examiner
detennines that the limitations of claim 1 "have routinely been performed
pre-computer era" and "simply describe the compiling of medical data
which was well known to have been performed using hand written media
before the advent of computers." Final Act. 3. The Examiner concludes that
these additional elements do not amount to significantly more than the
judicial exception "because the claim recites a generic computer and typical
components of a generic computer, performing routine and conventional
function of implementing instructions of an abstract idea on a computer."
Id. at 3--4. The Examiner does not consider "using a computer to compile
medical information directed towards a 'patient' user ... as an improvement
to anther technology or technical field." Id. at 4.
Appellant argues that the "Examiner does not provide any rationale"
for asserting that the claims do not include limitations that are significantly
more than the abstract idea itself. Br. 22. Appellant submits that, to the
contrary, "the claims do include meaningful limitations beyond generally
linking the use of an abstract idea to a computer." Id. at 22-23. In support,
Appellant maintains that "[t]he claims are limited by a number of other
factors, namely: the type of information gathered and the particular
manipulation of the data." Id. at 23.
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We are not persuaded by Appellant's argument. As set forth supra,
the Examiner's determination that the limitations of claim 1, considered
individually and as an ordered combination, do not amount to significantly
more than the abstract idea itself is based on the Examiner's rationale that
claim 1 involves generic computing components, such as a non-transitory
computer readable storage medium and an electronic resource for compiling
information. See, e.g., Spec. ,r 21 ( computing devices 14 may include any
device, component, or equipment with a processing element and associated
memory); see also, e.g., Spec. ,r,r 20-26. Notably, "mere[] ... generic
computer implementation" of an abstract idea does not transform the
abstract idea into patent-eligible subject matter. Alice, 134 S. Ct. at 2357.
Moreover, as set forth supra with reference to Electric Power Group,
limiting information to a particular content is insufficient to transform an
abstract idea into a patent-eligible application of the idea. See Electric
Power Group, 830 F.3d at 1353.
In further support, Appellant maintains that
[t]he Diehr example cited by the court in Alice Corp.
demonstrates that the "significantly more" requirement need not
require much more than input of data and performance of
repeated calculation of that data by a computer to transform a
patent ineligible abstract idea into a patent eligible application of
the idea. The claims recite combinations of elements that far
surpass the additional limitations of Diehr in terms of providing
'significantly more' than an abstract idea, when applied as in
Alice Corp.
Br. 23. However, Appellant does not provide sufficient argument or
evidence that claim 1 recites a combination of elements that far surpasses
those additional limitations of Diehr. Our reviewing court instructs us that
lavvyer arguments and conclusory statements which are unsupported by
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Application 13/478,594
factual evidence are entitled to little probative value. See In re Pearson, 494
F.2d 1399, 1405 (CCPA 1974) ("Attorney's argument in a brief cannot take
the place of evidence."); In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir.
1997); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Moreover, the
Court in Diehr explained that the claimed method requires "installing rubber
in a press, closing the mold, constantly determining the temperature of the
mold, constantly recalculating the appropriate cure time through the use of
the formula and a digital computer, and automatically opening the press at
the proper time." Diamond v. Die hr, 450 U.S. 175, 187 ( 1981 ). The Comi
found that the respondents' claims were not an attempt to patent an
unpatentable principle ( e.g., mathematical formula), but rather an industrial
process "which, when considered as a whole, is perfon11ing a function which
the patent laws were designed to protect" even though it irnplemented or
applied a mathematical formula." Id. at 192. In contrast, claim l appears to
seek to patent an unpatentable principle (i.e., the abstract idea of the
collection, organization, and manipulation of data), rather than an industrial
process into which the unpatentable principle has been integrated.
Appellant further argues that "the claims do not seek to tie up the
exception so that others cannot practice it," but"[ o ]n the contrary, the claims
include specific and meaningful limitations restricting them to specific
applications rather than merely an abstract idea." Br. 23 (specifically
referring to the recitation of a computer program in claim 12). However,
merely because claims do not preempt all forms of the abstraction does not
make them any less abstract. See OIP Techs., Inc. v. Amazon.com, Inc., 788
F.3d 1359, 1362---63 (Fed. Cir. 2015) ("[T]hat the claims do not preempt all
price optimization or may be limited to price optimization in the e-
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commerce setting do not make them any less abstract."). Moreover,
characterizing preemption as a driving concern for patent eligibility is not
the same as characterizing preemption as the dispositive test for patent
eligibility. Instead, "[t]he Supreme Court has made clear that the principle
of preemption is the basis for the judicial exceptions to patentability" and
"[ f]or 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) (citing Alice, 134 S. Ct. at 2354). Although
"preemption may signal patent ineligible subject matter, the absence of
complete preemption does not demonstrate patent eligibility." Id. The
Federal Circuit concluded that "[ w ]here a patent's claims are deemed only to
disclose patent ineligible subject matter under the Mayo framework, ...
preemption concerns are fully addressed and made moot." Id.; see also id.
(holding that "[i]n this case, Sequenom's attempt to limit the breadth of the
claims by showing alternative uses of cfIDNA outside of the scope of the
claims does not change the conclusion that the claims are directed to patent
ineligible subject matter"). Given this direction from our reviewing court,
we decline to apply a preemption standard in our analysis, and instead apply
the steps set forth by the Supreme Court in Alice and Mayo.
Finally, Appellant argues that "the claims are not directed solely to an
abstract idea, but rather include manipulating and using specific types of
data in specific ways to provide a novel information presentation, education,
and compilation system." Br. 24 ( emphasis added). However, patent
eligibility of an abstract idea does not depend on its alleged novelty ( or non-
obviousness) in any case. Mayo, 132 S. Ct. at 1303---04; see also Diehr, 450
U.S. at 188-89 ("The 'novelty' of any element or steps in a process, or even
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of the process itself, is of no relevance in determining whether the subject
matter of a claim falls within the § 101 categories of possibly patentable
subject matter.").
Thus, claim 1, when considered "both individually and 'as an ordered
combination,"' amounts to nothing more than an attempt to patent the
abstract ideas embodied in the steps of these claims. See Alice, 134 S. Ct. at
2355 (quoting Mayo, 132 S. Ct. at 1298). Put another way, the limitations of
independent claim 1 fail to transform the nature of these claims into patent-
eligible subject matter. See id. (citing Mayo, 132 S. Ct. at 1297, 1298).
Accordingly, we sustain the Examiner's rejection of independent
claim 1, and claims 2-13, 15, 19, and 20 2-11 fall therewith.
DECISION
The Examiner's decision rejecting claims 1-13, 15, 19, and 20 is
AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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