Ex Parte Vann et alDownload PDFPatent Trial and Appeal BoardAug 21, 201813440361 (P.T.A.B. Aug. 21, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/440,361 04/05/2012 John Raymond Vann 92558 7590 08/23/2018 Merchant & Gould- Welch Allyn P.O. Box 2903 Minneapolis, MN 55402 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. 10156.0048US01 2562 EXAMINER HOLCOMB, MARK ART UNIT PAPER NUMBER 3626 NOTIFICATION DATE DELIVERY MODE 08/23/2018 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): USPT092558@merchantgould.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOHN RAYMOND VANN, ROBERT PAUL WILMINGTON, and EDWARD IMBODEN Appeal2017-006846 Application 13/440,361 Technology Center 3600 Before CARL W. WHITEHEAD JR., JESSICA C. KAISER and AARON W. MOORE, Administrative Patent Judges. WHITEHEAD JR., Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants are appealing the Examiner's Final Rejection of claims 1 and 3-20 under 35 U.S.C. § 134(a). Claim 2 has been cancelled. Appeal Brief 5. We have jurisdiction under 35 U.S.C. § 6(b) (2012). We affirm. Introduction The invention is directed to "[a] method for displaying patient data includ[ing] receiving physiological data from a medical monitoring device." Abstract. Appeal2017-006846 Application 13/440,361 Illustrative Claim 1. A method for displaying patient data, the method compnsmg: receiving physiological data from a medical monitoring device, the medical monitoring device obtaining the physiological data from a patient; determining, by a computing device specially programmed to monitor aspects of a patient's physiological attributes, when patient identification information and room location information have been received for the patient; displaying, by the computing device, the physiological data at a temporary location on a display screen of a medical display device when the patient identification information and room location information for the patient have not been received, the temporary location including a message area having a prompt requesting entry of the room location information; receiving the patient identification information and the room location information; and moving the physiological data for the patient from the temporary location to a main display area on the display screen when the patient identification information and room location information for the patient have been received. Rejection on Appeal1 Claims 1 and 3-20 stand rejected under 35 U.S.C. § 101 because the claimed invention is directed to non-statutory subject matter. Answer 2-5. ANALYSIS Rather than reiterate the arguments of Appellants and the Examiner, we refer to the Appeal Brief ( filed November 7, 2016), the Reply Brief ( filed 1 The 35 U.S.C. § 103 rejection of claims 1 and 3-20 was withdrawn by the Examiner. Answer 4. 2 Appeal2017-006846 Application 13/440,361 March 23, 2017), the Answer (mailed February 15, 2017), and the Final Action (mailed February 24, 2016) for the respective details. 35 U.S.C. §101 Rejection The Supreme Court has set forth an analytical "framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts." Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 134 S. Ct. 2347, 2355 (2014) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71-73 (2012)). In the first step of the analysis, we determine whether the claims at issue are "directed to" a judicial exception, such as an abstract idea. Alice, 134 S. Ct. at 2355. If not, the inquiry ends. Thales Visionix Inc. v. US., 850 F.3d 1343, 1346 (Fed. Cir. 2017); Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016). If the claims are determined to be directed to an abstract idea, then we consider under step two whether the claims contain an "inventive concept" sufficient to "transform the nature of the claim into a patent-eligible application." Alice, 134 S. Ct. at 2355 (quotations and citation omitted). Noting that the two stages involve "overlapping scrutiny of the content of the claims," the Federal Circuit has described "the first-stage inquiry" as "looking at the 'focus' of the claims, their 'character as a whole,"' and "the second-stage inquiry (where reached)" as "looking more precisely at what the claim elements add--specifically, whether, in the Supreme Court's terms, they identify an 'inventive concept' in the application of the ineligible matter to which (by assumption at stage two) the claim is directed." Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 3 Appeal2017-006846 Application 13/440,361 1353 (Fed. Cir. 2016). In considering whether a claim is directed to an abstract idea, we acknowledge, as did the Court in Mayo, that "all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas." Mayo, 566 U.S. at 71. Step One: Whether the Claims Are Directed to a Patent-Ineligible Concept (Abstract Idea) The Examiner finds: The claims are directed to a series of steps, an apparatus or storage medium related to displaying received physiological data for multiple patients in one area orientated in rows and columns, wherein the displaying is in one area when room location information is missing, displaying a message area having a prompt requesting entry of the room location information, and displaying the patient information in a new area once the missing information is received, wherein the first area comprises the display of patient tiles that at least partially overlap and have fonts of varying size which merely encompasses the abstract ideas of comparing new (patient identification information, room information) and stored information (patient physiological information) and using rules to identify options ( display at which location according to the rules); and/or using categories ( data categories, including patient identification, room information, physiological) to organize, store and transmit information ( determining where to display received information). Final Action 4. Appellants argue: The Office Action never provides analysis under step one and erroneously skips straight to step two. See Office Action, pp. 3-4. To be clear, the Office Action never identifies an abstract idea to which the claims are directed. Furthermore, in contravention of the May 2016 Update, 2 the Office Action does not "identify the abstract idea as it is recited (i.e., set forth or described) in the 2 May 2016 Update to the Guidance on Patent Subject Matter Eligibility. 4 Appeal2017-006846 Application 13/440,361 claim, and explain why it corresponds to a concept that the courts have identified as an abstract idea." May 2016 Update, p. 2 ( emphasis added). The deficient step one analysis, standing alone, is enough to warrant reversal of the § 101 rejection. See, e.g., Ex parte Kane; Ex parte Kogan. Appeal Brief 25. The Federal Circuit has repeatedly noted that "the prima facie case is merely a procedural device that enables an appropriate shift of the burden of production." Hyatt v. Dudas, 492 F.3d 1365, 1369 (Fed. Cir. 2007) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). The court has, thus, held that the Office 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." In re Jung, 637 F.3d 1356, 13 62 (Fed. Cir. 2011 ). We determine the Examiner provided sufficient information in the Final Action, and accordingly, we do not find Appellants' argument persuasive of Examiner error. In addition, we observe the Final Action mailed prior to the May 2016 Update to the Guidance on Patent Subject Matter Eligibility. Final Action (mailed February 24, 2016). In the Answer, the Examiner clarifies the abstract idea found under step one is "moving patient physiological data from a temporary location that includes a prompted messaging area to a main display area on the screen when the patient identification information and room location information for the patient have been determined to have been received." Answer 6-7. In Reply, Appellants contend "[t]he claims are directed to specific graphical user interfaces with prescribed 5 Appeal2017-006846 Application 13/440,361 functionality that is directly related to the structure of the interfaces." Reply Brief 3. Appellants, however, do not provide persuasive argument or evidence to show the claims are limited to any specific graphic user interface. Appellants argue: Additionally, the claims are clearly directed to patentable subject matter. The Federal Circuit emphasized in Planet Blue that the "concern underlying the exceptions to § 101 is not tangibility, but preemption." Planet Blue, p. 25. Thus, the Federal Circuit "look[ ed] to whether the claims in these patents focus on a specific means or method that improves the relevant technology .... " Id. at p. 23. The instant claims present no issues of preemption." Appeal Brief 26. We agree the Supreme Court has described "the concern that drives this exclusionary principle [i.e., the exclusion of abstract ideas from patent eligible subject matter] as one of pre-emption." Alice, 134 S. Ct. at 2354. However characterizing pre-emption as a driving concern for patent eligibility is not the same as characterizing preemption as the sole test for patent eligibility. As our reviewing court has explained, "[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). And although "preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility." Id. Moreover, "[ w ]here a patent's claims are deemed only to disclose patent ineligible subject matter under the 6 Appeal2017-006846 Application 13/440,361 [Alice/Mayo] framework ... , preemption concerns are fully addressed and made moot." Id.; see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362-63 (Fed. Cir. 2015), cert. denied, 136 S. Ct. 701 (2015) ("[T]hat the claims do not preempt all price optimization or may be limited to price optimization in the ecommerce setting do not make them any less abstract."). We agree with the Examiner, at step one of the Alice analysis, that the claims are directed to one or more abstract ideas. Accordingly, we tum to the second step of the Alice analysis, in which we determine whether the additional elements of the claims transform them into patent-eligible subject matter. Step Two: Whether Additional Elements Transform the Idea into Patent-Eligible Subject Matter The Examiner finds: [T]he claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements or combination of elements in the claims, other than the abstract idea per se, amount to no more than a recitation of A) generic computer structure that serves to perform generic computer functions that serve to merely link the abstract idea to a particular technological environment (i.e. the Pre-Grant Publication of Applicant's specification discloses the following material ( at the corresponding paragraphs) to be composed of conventional hardware: medical monitoring device (19- 23),computing device (53), display screen (22, 51 ), medical display device ( 41, 45), central monitoring station ( 41-45), processing unit ( 48, 53), system memory ( 48, 50, 53), data storage medium (50)); and B) functions that are well-understood, routine, and conventional activities previously known to the pertinent industry (i.e. 7 Appeal2017-006846 Application 13/440,361 rece1vmg, determining, displaying, movmg, converting, removing and relocating data). Final Action 4--5. Appellants contend: In Example 23 [ of the May 2016 Update to the Guidance on Patent Subject Matter Eligibility], claim 1 is directed to a computer-implemented method for dynamically relocating textual information in a graphical user interface. Claim 1 of Example 23 recites, in part, "automatically relocating the textual information ... to an unobscured portion of the first window." The Analysis of claim 1 reasons that the claim does not set forth an abstract idea but, instead, "is necessarily rooted in computer technology to overcome a problem specifically arising in graphical user interfaces." Id., p. 9. Similarly, the instant claims are directed to improvements in displaying patient physiological data on a medical computing device. These improvements meaningfully limit the claims. Accordingly, instant claim 1 is significantly more than an abstract idea. Appeal Brief 26-27. We do not find Appellants' arguments persuasive of Examiner error. The claims and Specification are directed to: [S]ystems and methods for displaying patient data. Physiological data is received from a medical monitoring device. The medical monitoring device obtains the physiological data from a patient. A determination is made as to whether patient identification information and room location information have been received for the patient. When it is determined that both the patient identification information and the room location information for the patient have not been received, the physiological data is displayed at a temporary location on a display screen of a medical display device. Specification, paragraph 3. 8 Appeal2017-006846 Application 13/440,361 Appellants' argument that the claimed invention improves a technology or technical field arising in the realm of computer networks (see Appeal Brief 26-27; Reply Brief 2-3) is not persuasive because the mere application of an abstract idea on a computer system does not make a claimed invention patentable. See Alice Corp., 134 S. Ct. at 2358 ("[I]f a patent's recitation of a computer amounts to a mere instruction to 'implemen[t]' an abstract idea 'on ... a computer,' []that addition cannot impart patent eligibility.") (citations omitted). Appellants do not argue, nor does Appellants' Specification state, that the claimed programmed computer processor requires specialized or improved technology. We further find Appellants' claims are distinguished from those claims that our reviewing court has found to be patent eligible by virtue of reciting technological improvements to a computer system because such improvements are not found in Appellants' claims here. See, e.g., DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1249 (Fed. Cir. 2014 (holding that claims reciting a computer processor for serving a "composite web page" were patent eligible because "the claimed solution is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks"); Enfzsh, 822 F.3d at 1338 (holding that claims directed to a self-referential table for a computer database were patent eligible because the claims were directed to an improvement in the functioning of a computer); Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253, 1259 (Fed. Cir. 2017) (holding that claims directed to "an improved computer memory system" having many benefits were patent eligible). 9 Appeal2017-006846 Application 13/440,361 Accordingly, we sustain the Examiner's 35 U.S.C. § 101 rejection of claims 1 and 3-20. DECISION The Examiner's 35 U.S.C. § 101 rejection of claims 1 and 3-20 is affirmed. No time period for taking any subsequent action in connection with this appeal maybe extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R. § 1.136(a)(l)(v). AFFIRMED 10 Copy with citationCopy as parenthetical citation