Ex Parte Yu et al

Patent Trials and Appeals Board

May 3, 2019

13665855 - (D) (P.T.A.B. May. 3, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/665,855 10/31/2012
95037 7590 05/07/2019
Patent Law W arks/Ricoh
Greg Sueoka
310 East 4500 South, Suite 400
Salt Lake City, UT 84107
FIRST NAMED INVENTOR
Haixia Yu
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.
10010-03556 us 4764
EXAMINER
TIEDEMAN, JASON S
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
05/07/2019 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):
docketing@patentlawworks.net
patents@patentlawworks.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HAIXIA YU, VIPIN NAMBOODIRI, and
TARO TERASHI
Appeal2017-009960
Application 13/665,855 1
Technology Center 3600
Before DEBRA K. STEPHENS, DANIEL J. GALLIGAN, and
DAVID J. CUTITTA II, Administrative Patent Judges.
GALLIGAN, Administrative Patent Judge.
DECISION ON APPEAL
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-20, which are all of the claims pending in the application. We
have jurisdiction under 35 U.S.C. § 6(b).
WeAFFIRM.2
1 According to Appellants, the real party in interest is Ricoh Company, Ltd.
App. Br. 3.
2 Our Decision refers to Appellants' Appeal Brief filed March 1, 201 7
("App. Br."); Appellants' Reply Brief filed July 17, 2017 ("Reply Br.");
Examiner's Answer mailed May 1 7, 2017 ("Ans."); and Final Office Action
mailed September 1, 2016 ("Final Act.").
Appeal2017-009960
Application 13/665,855
STATEMENT OF THE CASE
Claims on Appeal
Claims 1, 8, and 15 are independent claims. Claim 1 is reproduced
below:
1. A method comprising:
rece1vmg, using one or more computing devices, an
identity token associated with a patient at a node waiting for a
remote, virtual medical consultation, wherein the identity token
is used for identification of the patient;
generating, using the one or more computing devices, an
authorization token based on the identity token, wherein the
authorization token allows scheduler services to assign a medical
service provider for providing the remote, virtual medical
consultation to the patient;
generating, using the one or more computing devices, a list
of patients for whom authorization tokens have been generated;
identifying, using the one or more computing devices, one
or more factors used to schedule each of the patients on the list
of patients located at the node for remote, virtual medical
consultations, the one or more factors including an ailment
associated with the patient, a classification associated with the
patient, wherein the classification includes a level of urgency,
and a patient preference;
ordering, using the one or more computing devices, the list
of patients located at the node based on the one or more factors,
the ordered list indicating a selection order of the patients for the
remote, virtual medical consultations;
monitoring an availability status of a plurality of medical
service providers located at a hub;
receiving, using the one or more computing devices, an
indication of availability of a first medical service provider from
the plurality of medical service providers located at the hub in
response to detecting that a previous medical consultation of the
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first medical service provider has completed, the first medical
service provider associated with a specialty;
responsive to receiving the indication of availability of the
first medical service provider located at the hub, selecting, using
the one or more computing devices, a first patient from the
ordered list of patients based at least in part on the first patient
having an ailment that matches the specialty associated with the
first medical service provider;
checking, using the one or more computing devices, for an
available consultation device located at the node associated with
the first patient;
responsive to the consultation device being unavailable to
the first patient at the node or the first patient being unavailable
at the node, skipping the first patient;
determining a number of times that the first patient has
been skipped; and
responsive to determining that the number of times
exceeds a first threshold, reserving the consultation device for
the first patient at the node and assigning a next available service
provider associated with the specialty for the remote, virtual
medical consultation with the first patient; and
responsive to the consultation device being available to the
first patient at the node, assigning, using the one or more
computing devices, the first medical service provider for the
remote, virtual medical consultation with the first patient.
Examiner's Rejection
Claims 1-20 stand rejected under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter. Final Act. 3-6.
Our review in this appeal is limited to the above rejection and the
issues raised by Appellants. Arguments not made are waived. See MPEP
§ 1205.02; 37 C.F.R. § 41.37(c)(l)(iv).
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Principles of Law
An invention is patent eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
the following implicit exceptions: laws of nature, natural phenomena, and
abstract ideas. Alice Corp. v. CLS Bank Int'!, 573 U.S. 208,216 (2014).
In Alice, the Supreme Court 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." Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). The first step in the analysis is to
"determine whether the claims at issue are directed to one of those patent-
ineligible concepts." Id. at 217. 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.
USPTO January 7, 2019 Revised Section 1 OJ Memorandum
The USPTO recently published revised guidance on the application of
§ 101. See 2019 Revised Patent Subject Matter Eligibility Guidance, 84
Fed. Reg. 50 (Jan. 7, 2019) ("2019 Revised Guidance"). Under the 2019
Revised Guidance, 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); and
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(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)-(c), (e)-(h)).
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, and conventional
activities previously known to the industry, specified at a high level of
generality, to the judicial exception.
ANALYSIS
Appellants argue the claims as a group, addressing the limitations of
claim 1 specifically. See App. Br. 11-12, 20-21. We select independent
claim 1 as representative of Appellants' arguments for claims 1-20. See 37
C.F.R. § 41.37(c)(l)(iv)(2016).
The Examiner determines the claims are directed to an abstract idea.
Final Act. 3-4; see Ans. 4-5. The Examiner also determines the claims "do
not include additional limitations that are sufficient to amount to
significantly more than the" abstract idea. Final Act. 4-5; Ans. 10-11.
Appellants present several arguments against the § 101 rejection. The
Examiner has provided a comprehensive response to Appellants' arguments.
See Ans. 4-14. We do not find Appellants' arguments persuasive, as
discussed in greater detail below. We analyze the claims under the 2019
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Revised Guidance and adopt the nomenclature for the steps used in the
Memorandum.
STEP 1
Section 101 provides that "[ 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. Initially, the
Examiner determines, and we agree, that "the claims are directed toward
statutory categories." Final Act. 3. Independent claim 1 recites a method,
independent claim 8 recites a system, and independent claim 15 recites a
non-transitory computer useable medium. As such, the claims are directed
to statutory classes of invention within 35 U.S.C. § 101, i.e., a process, a
machine, and a manufacture.
STEP 2A Prong 1
Under Step 2A, Prong 1 of the Memorandum, we must determine
whether claim 1, being directed to a statutory class of invention, nonetheless
falls within a judicial exception.
The Examiner determines that claim 1 recites a process of
assigning a medical provider to an authorized patient, generating
a list of patients assigned to the provider at a node including
identified factors, ordering the patients at the node based on the
factors, monitoring whether a provider is available, receiving
provider availability indication based on whether the provider a
previous consultation, selecting a first patient from the list,
checking whether the consultation can be initiated at the node,
beginning the consultation if the consultation can be initiated or
skipping the patient for the next patient on the list of the
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consultation cannot be initiated, determining a number of times
a patient has been skipped and reserving the consultation at the
node if the number exceeds a threshold, and assigning the
provider to the reserved patient consultation at the node.
Final Act. 3-4 ( emphasis omitted). The Examiner also describes the claim
as directed to "[i]nitiating a consultation between a patient and a medical
special based on certain parameters" by "compar[ing] new ... and stored ...
information and us[ing] rules ... to identify options." Id. at 4.
Appellants argue the Examiner's determination that the claim is
directed to an abstract idea "does not consider the character of the claim[] as
a whole." App. Br. 9; see also Reply Br. 9-10. Additionally, Appellants
argue "the Examiner fails to provide any reasoning in the record that
supports the Examiner's" identified abstract idea and so "has not established
a prim a facie case of patent ineligibility under § 101." Reply Br. 5; see
Reply Br. 6-7.
Appellants' arguments do not persuade us of error in the Examiner's
determination that claim 1 recites an abstract idea, in particular, a mental
process. Putting aside the computing components recited in the claim,
which we consider at a later step, e.g., "one or more computing devices" and
"consultation device[ s ]" providing "virtual medical consultations," what
remains can be described as, to paraphrase the Examiner's determination
(see Final Act. 3-4), a process for ordering and scheduling patient
consultations with physicians by considering patient and physician factors.
For example, the claim recites (1) "generating ... a list of patients," using an
identity token to identify each patient and an authorization token to assign a
medical service provider to each patient (2) "identifying ... one or more
factors used to schedule each of the patients on the list of patients," and (3)
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"ordering ... the list of patients located at the node based on the one or more
factors." Claim limitations ( 1 )-(3) gather a list of patients and queue the
patients based on factors, e.g., "an ailment associated with the patient."
Ordering patients based on their specific needs is a typical activity
performed in health care, for example, in the process of triage. The claim
also recites ( 4) "monitoring an availability status of a plurality of medical
service providers," (5) "receiving ... an indication of availability of a first
medical service provider," and ( 6) "selecting ... a first patient from the
ordered list of patients based at least in part on the first patient having an
ailment that matches the specialty associated with the first medical service
provider." Claim limitations (4)-(6) determine when a health care provider
who matches a patient's needs is available to see a patient. Determining
when a provider is free to tend to another patient is a process typical for
advancing through a queue assigning tasks to resources. The claim further
recites (7) "assigning ... the first medical service provider ... with the first
patient" when the patient is available and (8) "skipping the first patient"
when the patient is unavailable. Claim limitations (7) and (8) serve to assign
a patient to a provider if the patient is available or skip the patient if the
patient is not available. Claim limitations (9) and (10) "determin[e] a
number of times that the first patient has been skipped" and reserve a
"consultation device for the first patient at the node and assign[] a next
available service provider ... with the first patient" if the number of skipped
times exceeds a threshold. Determining if a patient is available to see a
provider is a normal check to see whether a task is ready to be completed by
a resource, as is providing priority to a patient who has been skipped over a
threshold number of times. Accordingly, limitations (1)-(10) recite
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processes to observe and evaluate patients and providers in order to make a
judgement as to when a patient may see a provider. Such a process for
choosing and scheduling a waiting patient to see a physician falls into one of
the enumerated categories of abstract ideas identified in the 2019 Revised
Guidance, namely, a process that "can be performed in the human mind, or
by a human using a pen and paper," and is, accordingly, an abstract idea.
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed.
Cir. 2011).
Further, contrary to Appellants' assertion that the claim does not
recite an abstract idea because "the claim[] include[ s] specific features of
rules," (Ans. 13-14; see Reply Br. 11-12), the claim "demands the
production of a desired result ... without any limitation on how to produce
that result," encompassing a patent-ineligible abstract concept. Interval
Licensing LLC v. AOL, Inc., 896 F.3d 1335, 1345 (Fed. Cir. 2018); see
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d at 1372 (the claim
"does not limit its scope to any particular ... algorithm"). For example, the
claim recites "ordering ... the list of patients located at the node based on
the one or more factors," but, beside the command to order patients and
consider factors when doing so, the claim fails to describe how exactly those
factors should be considered when ordering patients. Similarly, the claim
recites "selecting ... a first patient from the ordered list of patients based at
least in part on the first patient having an ailment that matches the specialty
associated with the first medical service provider," but, beside the
consideration of medical specialty, the claim fails to describe how the
patient is actually selected.
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Additionally, we disagree with Appellants' argument that the
Examiner provided no "reasoning" in determining that the claim recites an
abstract idea. Reply Br. 5-7. The Examiner describes why the claim
limitations are directed to an abstract idea in detail. See Final Act. 3-4. For
example, the Examiner specifically identifies and addresses claim limitations
describing comparing the recited list of patients and associated factors. See
id. at 4. Still further, although Appellants argue the Examiner erred by not
providing "evidence" (Reply Br. 6), we are aware of no controlling authority
that requires the Office to provide factual evidence under step one of the
Alice framework to support a determination that a claim recites an abstract
idea. The Federal Circuit has stated 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 held
that the USPTO carries its procedural burden of establishing a prim a 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,
1362 (Fed. Cir. 2011) (quoting 35 U.S.C. § 132). Thus, all that is required
of the Office is that it 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. Id.; see also Chester v. Miller, 906 F.2d
1574, 1578 (Fed. Cir. 1990) ("Section 132 is violated when a rejection is so
uninformative that it prevents the applicant from recognizing and seeking to
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counter the grounds for rejection."). As discussed above, the Examiner has
done so.
STEP 2A Prong 2
Next, we determine whether the claim is directed to the abstract
concept itself or whether it is instead directed to some technological
implementation or application of, or improvement to, this concept, i.e.,
integrated into a practical application. See, e.g., Alice, 573 U.S. at 223
(discussing Diamond v. Diehr, 450 U.S. 175 (1981)).
The Examiner determines that the "claimed invention also does not
provide a technological solution to a technological problem." Ans. 9; see
Ans. 7.
Appellants argue "that the claimed invention is a solution of a
technological problem rooted in technology" because the "invention is about
how to connect patients in remote areas to get virtual medical consultation
through one or more computer networks, and thereby the claimed
invention roots in technology." Reply Br. 9; see App. Br. 11-12.
Appellants further argue the claim is "implemented by an unconventional
distributed system to 'enable load distribution"' and "the distributed
architecture allows the system to efficiently and accurately collect and use
the network and system resources in a manner designed for efficiency to
optimize the scheduling of consultations for patients." App. Br. 18-20
(citation omitted); see Reply Br. 14-15.
We determine the claim does not integrate the abstract idea into a
practical application. The Specification states that the invention addresses
"the problem of automatically matching the patient with the appropriate
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doctor in real time in order to maximize doctor utilization." Spec. ,i 4. The
problem of maximizing doctor utilization does not address a technological
problem or improve a technological system; maximizing doctor utilization is
a business or healthcare concern. Although Appellants highlight that the
claimed invention connects remote parties to virtual medical consultations
through computer networks (Reply Br. 9; see App. Br. 11-12), the claimed
"remote, virtual medical consultation" restriction and associated computing
components do not serve to integrate the abstract idea into a practical
application or otherwise transform the abstract idea into patent-eligible
subject matter. Rather, "[ a ]11 that limitation does is to confine the abstract
idea to a particular technological environment," in this case, remote, virtual
medical consultations. Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838
F.3d 1253, 1258-59 (Fed. Cir. 2016). "[M]erely limiting the field of use of
the abstract idea to a particular existing technological environment does not"
transform the claim into patent-eligible subject matter. Id. at 1259.
Furthermore, Appellants' arguments that the claim "enable[s] load
distribution" (App. Br. 18-20; see Reply Br. 14-15) do not persuade us the
claim integrates the abstract idea into a practical application. First, many of
the load distribution improvements Appellants point out - namely, "remote
patients are assigned to multiple medical service providers rather than a
single medical service provider" and "maintaining similar numbers of
patients waiting at each node and the perceived fairness" (App. Br. 18-20;
see also Reply Br. 15; see also Spec. ,i 142) - are not improvements to any
technology or computing system, but are instead improvements to the load
of patients waiting to be seen by doctors, i.e., human loads. Second, even if
"[ d]istributing functionality in different servers is helpful in load balancing"
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(App. Br. 19 ( citing Spec. ,i 49) ), the claim does not recite multiple servers,
and, therefore, the claim does not provide such load distribution for multiple
servers.
In view of Appellants' Specification, and consistent with the
Examiner's determinations, claim 1 is not directed to a specific asserted
improvement in computer technological implementation or otherwise
integrated into a practical application and, thus, is directed to a judicial
exception.
STEP 2B
Next, we determine whether the claim includes additional elements
that provide significantly more than the recited judicial exception, thereby
providing an inventive concept. Alice, 573 U.S. at 221 (quoting Mayo, 566
U.S. at 72-73).
The Examiner determines "the additional elements or combination of
elements" recited by the claim are "generic computer structure[ s] that
serve[] to perform generic computer functions ... i.e. one or more
computing devices, a consultation device, one or more processors, a non-
transitory computer useable medium, a computer, a storage device," and are
"functions that are well-understood, routine, and conventional activities ...
i.e., receiving data, generating data, identifying data, ordering data,
monitoring data, receiving data, selecting data, checking data, skipping data,
determining data, assigning data, applying data, capturing data, storing data,
forwarding data, associating data, selecting data, transmitting data." Final
Act. 5-6 ( emphases omitted).
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Appellants argue that, even if those structures and functions are
known and conventional, the claim "amount[ s] to an inventive concept due
to the 'the non-conventional and non-generic arrangement of known,
conventional pieces.'" App. Br. 16 ( citation omitted).
We agree with the Examiner's finding that that the recited steps are
well-understood, routine, and conventional computing functions, all
performed by generic computing devices, e.g., "one or more computing
devices." Final Act. 5-6. Indeed, the Specification supports the Examiner's
findings, stating that the "apparatus for performing the" invention "may
comprise a general-purpose computer selectively activated or reconfigured
by a computer program stored in the computer." Spec. ,-J 33; see Spec. ,-J,-J 39,
70. Considering the claimed elements separately, these computer functions
are generic, routine, and conventional computer activities that are performed
only for their conventional uses. See Elec. Power Grp. v. Alstom S.A., 830
F.3d 1350, 1353 (Fed. Cir. 2016) ("The focus of the asserted claims ... is on
collecting information, analyzing it, and displaying certain results of the
collection and analysis."); see also In re Katz Interactive Call Processing
Patent Litigation, 639 F.3d 1303, 1316 (Fed. Cir. 2011) ("Absent a possible
narrower construction of the terms 'processing,' 'receiving,' and
'storing,' ... those functions can be achieved by any general purpose
computer without special programming."). None of these activities is used
in an unconventional manner nor do any of these activities produce an
unexpected result. In short, each step does no more than require a generic
computer to perform generic computer functions. As to the information
operated upon, "even if a process of collecting and analyzing information is
'limited to particular content' or a particular 'source,' that limitation does
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not make the collection and analysis other than abstract." SAP America, Inc.
v. InvestPic LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018).
Further, considered as an ordered combination, the computer
components of Appellants' claim add nothing that is not already present
when the steps are considered separately. In this particular case, the broadly
claimed sequence of information reception, analysis, and output, which
focuses on the result rather than the technical details of its implementation,
recites generic and conventional computer implementation of the mental
process, i.e., the abstract idea. See Ultramercial, Inc. v. Hulu, LLC, 772
F.3d 709, 715 (Fed. Cir. 2014) (sequence of receiving, selecting, offering for
exchange, display, allowing access, and receiving payment recited an
abstraction), Two-Way Media Ltd. v. Comcast Cable Communications, LLC,
874 F.3d 1329, 1339 (Fed. Cir. 2017) (sequence of processing, routing,
controlling, and monitoring). The ordering of the steps is therefore ordinary
and conventional. We, thus, conclude that the claim does not provide an
inventive concept because the additional elements recited in claim 1 do not
provide significantly more than the recited judicial exception.
Additionally, Appellants' argument that "the instant claim[] do[es] not
preempt all approaches to 'initiating a consultation between a patient and a
medical specialist based on certain parameters"' (App. Br. 12-13; see Reply
Br. 10, 12-13) does not persuade us that the claim is directed to patent-
eligible subject matter. Although preemption is characterized as a driving
concern for patent eligibility, preemption itself is not the test for patent
eligibility. Rather, "[ w ]hile preemption may signal patent ineligible subject
matter, the absence of complete preemption does not demonstrate patent
eligibility." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
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1379 (Fed. Cir. 2015). Where claims are deemed to recite only patent-
ineligible subject matter under the Alice analysis, as they are here,
"preemption concerns are fully addressed and made moot." Id.
Accordingly, claim 1 does not recite patent-eligible subject matter;
because claim 1 is representative (see App. Br. 20-21 ), we also conclude
that remaining claims 2-20 also do not recite patent-eligible subject matter.
DECISION
We affirm the Examiner's decision rejecting claims 1-20 under
35 U.S.C. § 101 as being directed to patent-ineligible subject matter.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a). See 37 C.F.R.
§ 41.50(±).
AFFIRMED
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