JITANDER DUDEE et al.

Patent Trials and Appeals Board

Jun 4, 2021

2020005472 (P.T.A.B. Jun. 4, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/135,835 04/22/2016 JITANDER DUDEE 111011-0007 1065
114262 7590 06/04/2021
Black, McCuskey, Souers & Arbaugh, LPA
220 Market Avenue, South, Suite 1000
Canton, OH 44702
EXAMINER
TOMASZEWSKI, MICHAEL
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
06/04/2021 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):
ip@bmsa.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JITANDER DUDEE and VIKRAM DUDEE
Appeal 2020-005472
Application 15/135,835
Technology Center 3600
Before MURRIEL E. CRAWFORD, NINA L. MEDLOCK, and
BRADLEY B. BAYAT, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING

STATEMENT OF THE CASE
Appellant filed a Request for Rehearing (“Request”), pursuant to
37 C.F.R. § 41.52, on March 1, 2021, seeking reconsideration of our
Decision on Appeal mailed Dec. 30, 2020 (“Decision”), in which we
affirmed the Examiner’s rejection of claims under 35 U.S.C. § 101 as
directed to an abstract idea without significantly more. We have jurisdiction
over the Request under 35 U.S.C. § 6(b).

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DISCUSSION
We note at the outset that a Request for Rehearing “must state with
particularity the points believed to have been misapprehended or overlooked
by the Board.” 37 C.F.R. § 41.52(a). A Request for Rehearing is not an
opportunity to rehash arguments raised in the Appeal Brief, filed April 13,
2020 (“Appeal Brief”), or in the Reply Brief, filed July 20, 2020 (“Reply
Brief”). Neither is it an opportunity to merely express disagreement with a
decision without setting forth points believed to have been misapprehended
or overlooked. Arguments not raised in the briefs before the Board and
evidence not previously relied on in the briefs also are not permitted except
in the limited circumstances set forth in §§ 41.52(a)(2) through (a)(4). Id.
To the extent the Appellant presents supplemental or new arguments
in the Request, those arguments are untimely and, as such, will not be
considered except where the arguments are based on a recent relevant
decision of either this Board or a federal court, or on an allegation that the
Board’s decision contains an undesignated new ground of rejection. See id.
The Request applies the analysis in Gree, Inc. v. Supercell OY,
PGR2018-00008, 2019 WL 8047 (PTAB Jan. 2, 2019) to the instant
application. Appellant relies on this case as support for its argument that we
erred in determining what the claims are directed to. Specifically, Appellant
argues that there must be a correlation between the characterization of the
abstract idea allegedly recited and the actual text recited in the claims.
(Request 15). As such, Appellant argues that the Examiner and the Board
erred when characterizing the abstract idea recited in the instant claims as
managing a health record. We note that the Examiner made the
determination that the claims recite a certain method of organizing human
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activity e.g. managing a health record, in the Final Action. (Final Act. 4).
However, Appellant did not make this argument in the Appeal Brief.
Therefore, we will not address this argument because it is presented for the
first time in the Request and, as we stated above, new arguments are not
considered in the Request for Rehearing. In any case, the decision in
PGR2018-00008 is not precedential and thus not binding on this panel of the
Board.
Appellant also argues that the displaying step is a recitation in
addition to any abstract idea recited and must be treated as such under
step 2B of the Alice analysis. Appellant argues that we erred because there
is no evidence that the displaying step is well-understood, conventional and
routine. (Request 3, 6).
We do not agree that we erred in determining that the displaying step
is a recitation of insignificant extra-solution activity. As we stated on
page 12 of the Decision, the displaying step recites insignificant or token
activity because the displaying here merely presents the results of the
abstract steps recited in the claim. See Bilski v. Kappos, 561 U.S. 593,
610–11 (2010) (“Flook [i.e., Parker v. Flook, 437 U.S. 584 (1978)] stands
for the proposition that the prohibition against patenting abstract ideas
‘cannot be circumvented by attempting to limit the use of the formula to a
particular technological environment’ or adding ‘insignificant post-solution
activity.”’) (quoting Diamond v. Diehr, 450 U.S. 175, 191–92 (1981)). See
also 2019 Revised Guidance, 84 Fed. Reg. 55 n.31.
Appellant argues that the displaying step provides a specific
improvement over prior art systems that results in an improved user interface
and presents a new technique for analyzing data contained in a medical
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record. (Appeal Br. 18, Request 18). However, there is no indication in the
claims that the displaying step requires any specialized computer or
inventive computer components. In fact, the Specification indicates just the
opposite by disclosing that computing devices used may be generic devices
with generic (unimproved interfaces). (Spec. ¶ 50). Instead, any
improvement is to the abstract idea of managing health records. See Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016)
(gathering, sending, monitoring, analyzing, selecting, and presenting
information does not transform the abstract process into a patent-eligible
invention); Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1084, 1093 (Fed.
Cir. 2019) (data gathering and displaying are well-understood, routine, and
conventional activities); OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d
1359, 1363 (Fed. Cir. 2015) (claims reciting, inter alia, sending messages
over a network, gathering statistics, using a computerized system to
automatically determine an estimated outcome, and presenting offers to
potential customers found to merely recite “‘well-understood, routine
conventional activit[ies],’ either by requiring conventional computer
activities or routine data-gathering steps” (citation omitted) (alteration in
original)). Although Appellant may be correct that the claims recite a new
technique for analyzing data, this would be an improvement to the abstract
idea of managing a health record, not an improvement to the interface on
which it is displayed or how the medical health record is displayed.
Appellant argues that because the displaying step is not insignificant
extra solution activity and is not part of the abstract idea, we erred by not
making a determination that the displaying step was well-understood,
conventional and routine as required by step 2B of the Alice analysis.
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However, we made the determination that the displaying step is generic and
conventional on page 9 of the Decision. In addition, there is ample evidence
of record that the interface on which the information is displayed is well-
understood, conventional and routine because the Specification itself
discloses that the interface is an unimproved interface on a generic
computing device. In addition, simply appending well-understood, routine
and conventional activities previously known in the industry, such as
displaying data, is indicative of an inventive concept not being present. See
Guidance 84 Fed. Reg. at 56.
Conclusion
The Appellant has not demonstrated that we misapprehended or
overlooked any points. For this reason we deny the Request.

Outcome of Decision on Rehearing:
Claims 35 U.S.C
§
Reference(s)/Basis Denied Granted
1–21 101 Eligibility 1–21

Final Outcome of Appeal after Rehearing:
Claims 35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1–21 101 Eligibility 1–21

DENIED