Ex Parte Wong et al

Patent Trials and Appeals Board

Mar 20, 2019

12818930 - (D) (P.T.A.B. Mar. 20, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/818,930 06/18/2010 Daniel Wong
67491 7590 03/22/2019
DINSMORE & SHOHL, LLP
FIFTH THIRD CENTER
ONE SOUTH MAIN STREET
SUITE 1300
DAYTON, OH 45402
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.
ROK 0009 IA/WP26511US 8884
EXAMINER
MISIASZEK, AMBER AL TSCHUL
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
03/22/2019 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):
daytonipdocket@dinsmore.com
pair_roche@firsttofile.com
j ackie.pike@roche.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL WONG, DAVID HASKER, GLENN BRAS SINGTON,
STEFAN WEINERT, ABHISHEK S. SONI, ALAN GREENBURG,
PAUL J. GALLEY, ULRICH PORSCH, ROBERT E. REINKE, and
MARCO DE POLO
Appeal2018-000414
Application 12/818,930 1
Technology Center 3600
Before ELENI MANTIS MERCADER, CATHERINE SHIANG, and
LINZY T. McCARTNEY, Administrative Patent Judges.
SHIANG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-26, 62, 63, and 79-80, which are all the claims pending
and rejected in the application. We have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
1 Appellants identify Roche Diabetes Care, Inc. as the real party in interest.
App. Br. 2.
Appeal2018-000414
Application 12/818,930
STATEMENT OF THE CASE
Introduction
The present invention relates to "behavior modification methods and
systems and particularly to self-administered, behavior modification
facilitated through a structured tailoring method and system." Spec. ,r 2.
Claim 1 is exemplary:
1. A method of performing a self-administered, behavior
modification program on a blood glucose meter which
comprises facilitating a structured collection procedure for an
individual which helps the individual change a current behavior
to a target behavior and improves compliancy with the
structured collection procedure, said method comprising:
providing the blood glucose meter loaded with the
structured collection procedure and program instructions;
downloading the structured collection procedure from a
server onto a client device, wherein software on the client
computer serves as an interface between the server and the
meter, wherein the server can only access information related to
the installed version of the software and the server cannot
access data in a database residing on the client device, wherein
subsequent downloads of the particular structured collection
procedure onto the client require access from an authorized
client user;
measuring a biomarker comprising a blood glucose level
with the blood glucose meter according to the structured
collection procedure; and
executing the program instructions on the blood glucose
meter causing a processor of the blood glucose meter to:
personalize the structured collection procedure by
requesting goals from the individual to define for events
to be accomplished in the structured collection procedure
one or more adherence criteria that the processor uses to
determine automatically whether each event was
accomplished successfully and to define one or more exit
criteria for ending the structured collection procedure,
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Application 12/818,930
and requesting intervention preferences from the
individual;
initiate automatically a schedule of the events
defined in the structured collection procedure upon one
or more entry criteria being met;
provide intervention automatically according to the
intervention preferences when the one or more adherence
criteria for one of the events is not met;
end automatically the structured collection
procedure upon the one or more exit criteria being met,
wherein the processor continues automatically with the
next one of the events in the structured collection
procedure until the one or more exit criteria is met; and
assign a unique identifier to the events, when the
one or more adherence criteria are met, which
corresponds to the events in the structured collection
procedure; and wherein the unique identifier is not
assigned when the biomarker measurement is determined
by the processor as not being close enough in time to a
data event request based on a prescheduled time so as to
facilitate the structured collection procedure and improve
the compliancy with the structured collection procedure
of a management system; and
providing a microprocessor, a memory, a power
source, and an indicator, the indicator connected to the
processor and which can operate under the control of the
processor to emit audible, tactile, or visual alerts to the
individual of daily times for the biomarker measurement;
and
sending a message from the blood glucose meter to
a physician when the individual fails to complete one of
the one or more adherence criteria, wherein a
communication link between a computer of the physician
and the blood glucose meter can be established upon
connection via the server.
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Appeal2018-000414
Application 12/818,930
Rejection2
Claims 1-26, 62, 63, and 79-80 stand rejected under 35 U.S.C. § 101
because the claims are directed to patent-ineligible subject matter. Final
Act. 4--10.
ANALYSIS 3
35 u.s.c. § 101
We have reviewed the Examiner's rejection in light of Appellants'
contentions and the evidence of record. We concur with Appellants'
contention that the Examiner erred in this case.
Section 101 of the Patent Act provides "[ w ]hoever invents or
discovers any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof, may
obtain a patent therefor, subject to the conditions and requirements of this
title." 35 U.S.C. § 101. However, the Supreme Court has long interpreted
35 U.S.C. § 101 to include implicit exceptions: "[l]aws of nature, natural
phenomena, and abstract ideas" are not patentable. E.g., Alice Corp. Pty.
Ltd. v. CLS Banklnt'l, 573 U.S. 208,216 (2014) (internal quotation marks
and citation omitted).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
2 Throughout this opinion, we refer to the (1) Final Rejection dated Dec. 1,
2016 ("Final Act."); (2) Appeal Brief dated Apr. 18, 2017 ("App. Br."); (3)
Examiner's Answer dated Aug. 16, 2017 ("Ans."); and (4) Reply Brief dated
Oct. 12, 2017 ("Reply Br.").
3 Appellants raise additional arguments. Because the identified issue is
dispositive of the appeal, we do not need to reach the additional arguments.
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Application 12/818,930
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
we first determine what concept the claim is "directed to." See Alice, 573
U.S. at 219 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
Concepts determined to be abstract ideas, and, thus, patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611 );
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 191
(1981) ); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267---68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "a claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 187; see also id. at 191 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
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Application 12/818,930
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. ( citing Benson and Flook); see, e.g., id. at 187 ("It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a
patent-eligible application." Alice, 573 U.S. at 221 ( citation omitted). "A
claim that recites an abstract idea must include 'additional features' to
ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."' Id. ( quoting Mayo, 566 U.S. at 77).
"[M]erely requir[ing] generic computer implementation[] fail[ s] to transform
that abstract idea into a patent-eligible invention." Id.
The PTO recently published revised guidance on the application of
§ 101. USPTO's 2019 REVISED PATENT SUBJECT MATTER ELIGIBILITY
GUIDANCE, 84 Fed. Reg. 50 (Jan. 7, 2019) ("Memorandum"). Under the
guidance set forth in the Memorandum, we first look to whether the claim
recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes) (Step 2A, Prong 1 ); and
(2) additional elements that integrate the judicial exception into
a practical application (see MANUAL OF p ATENT EXAMINING
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PROCEDURE (MPEP) § 2106.05(a}-(c), (e}-(h)) (9th Ed., Rev.
08.2017, 2018) (Step 2A, Prong 2).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not "well-understood, routine, conventional" in the field (see
MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception. (Step 2B).
See Memorandum at 54--56.
Turning to Step 2B of the Memorandum, "[t]he second step of the
Alice test is satisfied when the claim limitations 'involve more than
performance of []well-understood, routine, [and] conventional activities
previously known to the industry."' Berkheimer v. HP Inc., 881 F.3d 1360,
1367 (Fed. Cir. 2018) (quoting Content Extraction & Transmission LLC v.
Wells Fargo Bank, Nat'! Ass 'n, 776 F.3d 1343, 1347--48 (Fed. Cir. 2014)
and Alice, 573 U.S. at 225). "Whether something is well-understood,
routine, and conventional to a skilled artisan at the time of the patent is a
factual determination." Berkheimer, 881 F.3d at 1369.
In this case, Appellants argue with respect to the Alice step-two
analysis,
the recited claim features discussed above are not well-
understood, routine, and conventional in the industry, and are
not characterized in Appellant's specification as such. Further,
the Examiner fails to provide any evidence for rebuttal to the
contrary to support the rejection and thereby clarify the record
for appeal.
App. Br. 19 ( emphasis omitted).
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Many features of claim 1. .. are simply not well-understood,
routine, conventional functions, nor has any evidence been
provided in the Final Office Action.
App. Br. 22.
the recited claim features discussed above are not well-
understood, routine, and conventional in the industry, and are
not characterized in Appellant's specification as such. Further,
the Examiner fails to provide any evidence for rebuttal to the
contrary to support the rejection and thereby clarify the record
for appeal.
App. Br. 23 ( emphasis omitted).
the recited features are simply not well-understood, routine,
conventional functions. As discussed above, the Examiner has
produced no evidence to substantiate Appellant's request for
such proof.
App. Br. 24 ( emphasis omitted).
The Examiner does not respond with the requisite evidence, as the
Examiner merely provides conclusory and high-level general statements
(Ans. 3, 7-9), which are insufficient for meeting the Berkheimer
requirement. See Berkheimer, 881 F.3d at 1369. Therefore, the Examiner
erred with respect to Step 2B of the Memorandum, and we are constrained
by the record to reverse the Examiner's rejection of claims 1-26, 62, 63, and
79-80 on procedural grounds.
DECISION
We reverse the Examiner's decision rejecting claims 1-26, 62, 63, and
79-80.
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Application 12/818,930
REVERSED
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