MEDIGRAM, INC.

Patent Trials and Appeals Board

Nov 23, 2020

2020003763 (P.T.A.B. Nov. 23, 2020)

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.
14/658,093 03/13/2015 Michael Chiu 122745-003UT1 7178
27189 7590 11/23/2020
PROCOPIO, CORY, HARGREAVES & SAVITCH LLP
525 B STREET
SUITE 2200
SAN DIEGO, CA 92101
EXAMINER
HOLCOMB, MARK
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
11/23/2020 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):
PTONotifications@procopio.com
docketing@procopio.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MICHAEL CHIU and ERIC LARKIN
___________

Appeal 2020-003763
Application 14/658,093
Technology Center 3600
____________

Before JEAN R. HOMERE, ERIC B. CHEN, and DAVID J. CUTITTA II,
Administrative Patent Judges.

CHEN, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–27. (Claims App.) We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

CLAIMED SUBJECT MATTER
The claims are directed to a messaging platform configured to
communicate with a messaging client installed on a mobile communication
device via a compact dedicated device (CDD). (Abstract.)
Claim 1, reproduced below, is illustrative of the claimed subject
matter, with disputed limitations in italics:
1. A system, comprising:
a messaging platform comprising at least one application
server and configured to:
receive a first message generated for a first device
of a first caregiver; and
broadcast the first message over a paging system;
a first dedicated compact device (CDD) associated with
the first device of the first caregiver, wherein the first CDD
comprises a long range radio frequency (RF) system and a short
range RF system, and is configured to:
receive, using the long range RF system, the first
message broadcast by the messaging platform over the
paging system;

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as
Medigram, Inc. (Appeal Br. 2.)
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transmit, using the short range RF system, the first
message to the first device of the first caregiver; and
provide an alert to the first caregiver based on an
alert rule; and
a first messaging client associated with the first
caregiver and is installed on the first device of the first
caregiver, wherein the first messaging client is
configured to:
receive the first message from the first CDD; and
provide at least a portion of the first message to the
first caregiver.

REFERENCES
Name Reference Date
Tippett US 2015/0161345 A1 June 11, 2015
Perdomo US 9,992,021 B1 June 5, 2018

REJECTIONS
Claims 1–27 stand rejected under 35 U.S.C. § 101 as directed to
patent-ineligible subject matter. (Final Act. 3–7.)
Claims 1–27 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Perdomo and Tippett. (Id. at 8–16.)

OPINION
§ 101 Rejection
We are persuaded by Appellant’s arguments (Appeal Br. 4) that the
Examiner has not sufficiently shown that independent claims 1, 20, 24, and
27 are directed to patent-eligible subject matter under 35 U.S.C. § 101.

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The Examiner determined that the claims are “analogous to the court-
defined abstract idea in Electric Power Group in that it collects information
(message, notification, alert and rule information), analyzes it (analyzes
collecting information to determine what to provide), and displays certain
results (outputs at least part of the message) of the collection and analysis.”
(Final Act. 5.) We agree that the Examiner has not satisfied the proper
burden for a prima facie case.
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
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
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. Kappos, 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);
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mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. 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 (1854))); 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 176; 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
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. at 191 (citing Benson and Flook); see also, 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 turn 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-
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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 published revised guidance on the application of § 101.
USPTO’s 2019 REVISED PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE,
84 Fed. Reg. 50 (Jan. 7, 2019); see also USPTO, October 2019 Update:
Subject Matter Eligibility, 84 Fed. Reg. 55942 (Oct. 17, 2019). Under that
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
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th
ed. 2019)).
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
are 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.
See 84 Fed. Reg. 56.

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Although the Examiner generally states that independent claims 1, 20,
24, and 27 are “analogous to the court-defined abstract idea in Electric
Power Group in that it collects information . . . , analyzes it . . . , and
displays certain results . . . of the collection and analysis” (Final Act. 5), this
statement neither: (a) identifies the specific limitations in the claims under
examination that the Examiner believes recite an abstract idea; nor (b)
demonstrates the identified limitations fall within the subject matter
groupings of abstract ideas of mathematical concepts, certain methods of
organizing human activity, or mental processes. See 84 Fed. Reg. at 56. In
particular, the Examiner neither accounts for all the limitations recited in
claims 1, 20, 24, and 27, nor adequately articulates why certain claimed
limitations are analogous to the facts of Electric Power Group.
Accordingly, we are persuaded by Appellant’s arguments, as follows:
the Final Action fails to identify the specific limitations
that recite the abstract idea. The Action instead, recites the
entire claim and then concludes without analysis the entire
claim is analogous to the court defined abstract idea in Electric
Power Group.
But the Action does not indicate which specific
limitations comprise the abstract idea? It merely lists all
limitations and then concludes without analysis that all of the
limitations are like the abstract idea identified in Electric Power
Group.
(Appeal Br. 4.)
Thus, we do not sustain the rejection of independent claims 1, 20, 24,
and 27 under 35 U.S.C. § 101. Claims 2–19, 21–23, 25, and 26 depend from
independent claims 1, 20, 24, and 27. We do not sustain the rejection of
claims 2–19, 21–23, 25, and 26 under 35 U.S.C. § 101 for the same reasons
discussed with respect to independent claims 1, 20, 24, and 27.
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§ 103 Rejection
We are unpersuaded by Appellant’s arguments (Appeal Br. 10; see
also Reply Br. 4–5) that the combination of Perdomo and Tippett would not
have rendered obvious independent claim 1, which includes the limitations
“a messaging platform comprising at least one application server and
configured to: receive a first message generated for a first device of a first
caregiver; and broadcast the first message over a paging system.”
The Examiner found that the “goTenna” device hardware of Perdomo,
which enable computers to communicate, corresponds to the limitations “a
messaging platform comprising at least one application server and
configured to: receive a first message generated for a first device of a first
caregiver; and broadcast the first message over a paging system.” (Final
Act. 9.) We agree with the Examiner’s findings.
Perdomo relates to “[a] hardware and software bundle that can enable
computers and mobile phones to communicate small data packages without
relying on the internet or the central cellular network infrastructure”
(Abstract), such hardware also referred to as “goTenna” (col. 8, ll. 38–40).
Figure 1 of Perdomo illustrates computing devices 1 and 2 communicating
with each other via a public network, via P2P or via a private network, such
networks including a “cellular telephone network, a metropolitan area
network (MAN), a Wide area network (WAN), a wireless local area
network, a virtual local area network, a common local area network (LAN),
personal area network (PAN), campus area network (CAN), or the like.”
(Col. 2, ll. 10–20.) Moreover, Perdomo explains that such devices include
an antenna that is “responsible for both the receipt and broadcasting of
signals.” (Col. 4, ll. 15–17.) Further, Perdomo explains that “[c]omputing
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devices 1 and 2 may be a communication endpoint such as a consumer
workstation, a server, a computer, a portable electronic device, [or] an
entertainment system configured to communicate over a network.” (Col. 2,
ll. 21–24.) Figure 2 of Perdomo illustrates a flow diagram for “enabling
private and point-to-point communication between computing devices in
accordance” (col. 1, ll. 58–60), such that “[t]he message from User 1 to
User 2 may be transmitted via the unlicensed radio spectrum” (col. 8, ll. 42–
43).
Because Perdomo explains that computing device 1 having “goTenna”
hardware: (i) includes a computer or server; (ii) includes an antenna for
receiving and transmitting signals; and (iii) communicates with computer
device 2 via various networks (e.g., MAN, WAN, LAN, PAN, or CAN) or
unlicensed radio spectrum, Perdomo teaches the limitations “a messaging
platform comprising at least one application server and configured to:
receive a first message generated for a first device of a first caregiver; and
broadcast the first message over a paging system.”
Appellant argues the following:
Perdomo is directed to the use of an adapter that can be
interfaced with, e.g., a computer or mobile phone in order to
allow point-to-point communication between such devices,
when access to the Internet or an associated central
infrastructure is not available.
. . .
Perdomo does not therefore teach “a messaging platform
comprising at least one application server and configured to:
receive a first message generated for a first device of a first
caregiver; and broadcast the first message over a paging
system.”
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(Appeal Br. 10 (emphasis omitted); see also Reply Br. 4–5.) However,
Appellant merely provides a summary of Perdomo with a conclusory
statement that Perdomo does not teach the limitations “a messaging platform
comprising at least one application server and configured to: receive a first
message generated for a first device of a first caregiver; and broadcast the
first message over a paging system.” Appellant has not provided any
persuasive arguments or evidence as to why the Examiner’s citation to the
“goTenna” hardware of Perdomo with computing devices 1 and 2 are in
error. We remind Appellant that merely repeating the claim language, and
the teachings relied upon by the Examiner in the rejection are not
tantamount to a responsive argument. Such a response to the Examiner’s
findings is insufficient to persuade us of Examiner error, as mere attorney
arguments and conclusory statements that are unsupported by factual
evidence are entitled to little probative value. In re Geisler, 116 F.3d 1465,
1470 (Fed. Cir. 1997); see also In re De Blauwe, 736 F.2d 699, 705 (Fed.
Cir. 1984); Ex parte Belinne, No. 2009-004693, slip op. at 7–8 (BPAI Aug.
10, 2009) (informative); see also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir.
2011) (“[W]e hold that the Board reasonably interpreted Rule 41.37 to
require more substantive arguments in an appeal brief than a mere recitation
of the claim elements and a naked assertion that the corresponding elements
were not found in the prior art.”); cf. In re Baxter Travenol Labs., 952 F.2d
388, 391 (Fed. Cir. 1991) (“It is not the function of this court to examine the
claims in greater detail than argued by an appellant, looking for [patentable]
distinctions over the prior art.”). Our rules require that an Appeal Brief
include “arguments” that “shall explain why the examiner erred.” 37 C.F.R.
§ 41.37(c)(1)(iv). “[M]ere statements of disagreement . . . do not amount to
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a developed argument.” SmithKline Beecham Corp. v. Apotex Corp., 439
F.3d 1312, 1320 (Fed. Cir. 2006).
Accordingly, we are not persuaded of error in the Examiner’s
obviousness rejection of claim 1. For the foregoing reasons, we sustain the
Examiner’s obviousness rejection of claim 1.
Claims 2–19 depend from claim 1, and Appellant has not presented
any additional substantive arguments with respect to these claims.
Therefore, we sustain the rejection of claims 2–19 under 35 U.S.C. § 103 for
the same reasons discussed with respect to independent claim 1.
Independent claims 20, 24, and 27 recite limitations similar to those
discussed with respect to independent claim 1, and Appellant has not
presented any additional substantive arguments with respect to these claims.
We sustain the rejection of claims 20, 24, and 27, as well as dependent
claims 20–23, 25, and 26 for the same reasons discussed with respect to
claim 1.

CONCLUSION
We reverse the Examiner’s decision rejecting claims 1–27 under 35
U.S.C. § 101.
We affirm the Examiner’s decision rejecting claims 1–27 under 35
U.S.C. § 103.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed. See
37 C.F.R. § 41.50(a)(1).

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DECISION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–27 101 Eligibility 1–27
1–27 103 Perdomo, Tippett 1–27
Overall
Outcome
1–27

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED