MERGE HEALTHCARE SOLUTIONS INC.

Patent Trials and Appeals Board

Oct 28, 2021

2021000694 (P.T.A.B. Oct. 28, 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.
15/475,930 03/31/2017 Murray A. Reicher 026436-9161-US10 1207
137160 7590 10/28/2021
MICHAEL BEST & FRIEDRICH LLP (Merge/IBM)
790 N WATER ST
SUITE 2500
MILWAUKEE, WI 53202
EXAMINER
MISIASZEK, AMBER ALTSCHUL
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
10/28/2021 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):
mkeipdocket@michaelbest.com
svlipl@us.ibm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MURRAY A. REICHER, CAROL G. SLOYER, and
TAREK EL RASHIDY

____________

Appeal 2021-000694
Application 15/475,930
Technology Center 3600

____________

Before MURRIEL E. CRAWFORD, NINA L. MEDLOCK, and
BRUCE T. WIEDER, Administrative Patent Judges.

WIEDER, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 seeks review under 35 U.S.C. § 134 from the Examiner’s
final rejection of claims 2, 4–9, 11–16, and 18–21. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as
International Business Machines Corporation. (Appeal Br. 2.)
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CLAIMED SUBJECT MATTER
Appellant’s “invention relates to scheduling of medical exams, and
more particularly, to systems and methods for scheduling of medical exams
with customer configured notifications, such as questions, warnings, and
information.” (Spec. ¶ 2.)
Claims 2, 9, and 16 are the independent claims on appeal. Claim 2 is
illustrative. It recites:
2. A computer-implemented method for scheduling a patient
for a medical exam, the method comprising:
by one or more processors executing program instructions:
providing a dynamically updateable graphical user
interface configured to display information to a user,
receive inputs from the user, and update the information
displayed to the user in response to the inputs received
from the user;
receiving, via the user interface, one or more exam
parameters associated with a medical exam to be
scheduled for a patient, wherein the one or more exam
parameters include at least one of: patient information, an
indication of a medical history, an indication of a facility,
an indication of an exam modality, an indication of an
insurance type, an experience level of the user, or an
indication of a medical procedure;
selecting, from a notification data structure storing
a plurality of notification rules and based at least in part on
the one or more exam parameters, one or more
notifications for display to the user, wherein:
the notification rules includes [sic] at least
associations between exam parameters and
respective notifications,
at least one of the one or more notifications
comprises, based on the notification rules, a
question that requires an acceptable response from
the user before scheduling of the medical exam may
be completed, and
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at least one of the one or more notifications,
based on the notification rules, comprises a warning
that requires an acknowledgement from the user
before scheduling of the medical exam may be
completed;
providing, via the user interface, the one or more
notifications including the question and the warning;
automatically determining whether the question has
received an acceptable response from the user;
automatically determining whether the warning has
received an acknowledgement from the user; and
in response to determining that the question did not
receive an acceptable response from the user or the
warning did not receive an acknowledgement from the
user, automatically preventing completion of the exam
scheduling.

REJECTION
Claims 2, 4–9, 11–16, and 18–21 are rejected under 35 U.S.C. § 101
as directed to a judicial exception without significantly more.

ANALYSIS
“Whoever 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. Section 101, however,
“contains an important implicit exception: Laws of nature, natural
phenomena, and abstract ideas are not patentable.” Alice Corp. v. CLS Bank
Int’l, 573 U.S. 208, 216 (2014) (quoting Ass’n for Molecular Pathology v.
Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
Alice applies a two-step framework, earlier set out in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66
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(2012), “for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts.” Alice, 573 U.S. at 217.
Under the two-step framework, it must first be determined if “the
claims at issue are directed to a patent-ineligible concept.” Id. at 218. If the
claims are determined to be directed to a patent-ineligible concept, e.g., an
abstract idea, then the second step of the framework is applied to determine
if “the elements of the claim . . . contain[] an ‘ “inventive concept” ’
sufficient to ‘transform’ the claimed abstract idea into a patent-eligible
application.” Id. at 221 (citing Mayo, 566 U.S. at 72–73, 79).
With regard to step one of the Alice framework, we apply a “directed
to” two-prong test to: 1) evaluate whether the claim recites a judicial
exception, and 2) if the claim recites a judicial exception, evaluate whether
the claim “appl[ies], rel[ies] on, or use[s] the judicial exception in a manner
that imposes a meaningful limit on the judicial exception, such that the claim
is more than a drafting effort designed to monopolize the judicial
exception.” See USPTO, 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50, 54 (Jan. 7, 2019) (hereinafter “2019 Guidance”).
The Examiner determines that the claims are “directed to scheduling a
patient for a medical exam, which is considered a mental process.”
(Answer 6.) The Examiner also determines that it “could be considered
certain methods of organizing human activity.” (Id.)
Appellant argues that “the claims are directed to a graphical user
interface that represent[s] improved technology for navigating and using a
scheduling system” and that the claims “provide a new and improved
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interface to a scheduling system that results in more efficient use of the
scheduling system.” (Reply Br. 3.)
Under step one of the Alice framework, we “look at the ‘focus of the
claimed advance over the prior art’ to determine if the claim’s ‘character as a
whole’ is directed to excluded subject matter.” Affinity Labs of Texas, LLC
v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)).
The “directed to” inquiry . . . cannot simply ask whether the
claims involve a patent-ineligible concept, because essentially
every routinely patent-eligible claim involving physical products
and actions involves a law of nature and/or natural phenomenon
. . . . Rather, the “directed to” inquiry applies a stage-one filter
to claims, considered in light of the specification, based on
whether “their character as a whole is directed to excluded
subject matter.” Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015).
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). In
other words, the first step of the Alice framework “asks whether the focus of
the claims is on the specific asserted improvement in [the relevant
technology] or, instead, on a process that qualifies as an ‘abstract idea’ for
which computers are invoked merely as a tool.” Id. at 1335–36; see also
2019 Guidance at 54–55.
The Specification provides evidence as to what the claimed invention
is directed. In this case, the Specification discloses that the “invention
relates to scheduling of medical exams, and more particularly, to systems
and methods for scheduling of medical exams with customer configured
notifications, such as questions, warnings, and information.” (Spec. ¶ 2.)
Claim 2 provides further evidence. Claim 2 recites “[a] computer-
implemented method for scheduling a patient for a medical exam, the
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method comprising: by one or more processors executing program
instructions: providing a dynamically updateable graphical user interface
. . . to display information . . . , receive inputs . . ., and update the
information displayed,” “receiving . . . one or more exam parameters,”
“selecting . . . one or more notifications for display,” “providing, via the user
interface, the one or more notifications,” “automatically determining
whether [a] question has received an acceptable response from the user,”
“automatically determining whether [a] warning has received an
acknowledgement from the user,” “and in response to determining” that an
acceptable response was not received “automatically preventing completion
of the exam scheduling.” In other words, claim 2 recites a screening
procedure to be completed in scheduling a patient for a medical
examination. Appellant does not argue that Appellant invented screening a
patient in scheduling a medical examination.
The claim limitations recite receiving data, selecting data, displaying
data (e.g., “providing, via the user interface, the one or more notifications”),
and analyzing data (e.g., “automatically determining” and “automatically
preventing completion”). Receiving, selecting, displaying, and analyzing
data have been determined to be directed to an abstract idea. See, e.g., Univ.
of Fla. Research Found., Inc. v. General Elec. Co., 916 F.3d 1363, 1367
(Fed. Cir. 2019) (claims “directed to the abstract idea of ‘collecting,
analyzing, manipulating, and displaying data’”), FairWarning IP, LLC v.
Iatric Sys., Inc., 839 F.3d 1089, 1093–94 (Fed. Cir. 2016) (determining “that
the ‘realm of abstract ideas’ includes ‘collecting information, including
when limited to particular content’” as well as analyzing and presenting
information), Content Extraction and Transmission LLC v. Wells Fargo
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Bank, Nat’l Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (treating as an
abstract idea “1) collecting data, 2) recognizing certain data within the
collected data set, and 3) storing that recognized data”), Bridge and Post,
Inc. v. Verizon Commc’ns, Inc., 778 F. App’x 882, 886–87 (Fed. Cir. 2019)
(obtaining information, analyzing the information, and presenting
customized information based on the analyzed information determined to be
directed to an abstract idea).
Claim 2 does not recite how the processor(s) provide the dynamically
updateable graphical user interface, how the user interface receives the exam
parameters, how the processor(s) select notification(s) for display from the
notification data structure, how the user interface provides the
notification(s), how the processor(s) determine whether an acceptable
response and warning notification acknowledgement were received (i.e.,
applies the notification rules), or how the processor(s) automatically prevent
completion of the exam scheduling. “Indeed, the claim language here
provides only a result-oriented solution, with insufficient detail for how a
computer accomplishes it. Our law demands more.” Intellectual Ventures I
LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1342 (Fed. Cir. 2017).
The inquiry as to whether the claims are directed to an abstract idea
“often turns on whether the claims focus on ‘the specific asserted
improvement in computer capabilities ... or, instead, on a process that
qualifies as an “abstract idea” for which computers are invoked merely as a
tool.’” Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1303 (Fed. Cir.
2018) (quoting Enfish, LLC, 822 F.3d at 1335–36). In this case, the asserted
improvement is to the information provided and rules applied, i.e., the
information presented on the user interface, and the rules followed based on
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the responsive information received. The processor(s), graphical user
interface, and notification data structure are invoked merely as tools
performing the generic computer functions of receiving, selecting,
analyzing, and displaying data.
The receiving step is simply a data gathering step. The selecting and
analyzing/determining steps merely recite data analysis, a basic computer
function. The displaying step merely describes the generic computer
function of outputting data to a display device, in this case a generically
recited “dynamically updateable graphical user interface.” The recited steps
of claim 2 do not improve the operation of the computing devices
themselves.
Appellant, however, argues that “[n]one of the recited claim
limitations relate[s] to concepts performed in a human mind as all of the
claimed subject matter is performed by one or more processors.” (Appeal
Br. 10.) We do not find this argument persuasive.
The 2019 Guidance identifies “concepts performed in the human mind
(including an observation, evaluation, judgment, opinion)” as mental
processes, and a category of abstract ideas. (2019 Guidance at 52 (footnote
omitted).) “Courts have examined claims that required the use of a
computer and still found that the underlying, patent-ineligible invention
could be performed via pen and paper or in a person’s mind.” Versata Dev.
Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015). Here, the
recited actions include receiving information (observation, information
gathering), selecting information (evaluation, judgment), providing
information (presenting information), determining (evaluation, judgment),
and preventing completion based on response (applying evaluation,
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judgment). (See 2019 Guidance at 52.) We find nothing in the claim that
forecloses it “from being performed by a human, mentally or with pen and
paper.” See Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307,
1318 (Fed. Cir. 2016).
The claim limitations recite receiving medical exam parameters,
selecting and providing to the user notifications based at least in part on the
exam parameters, determining the acceptability of the responses, and, as
appropriate, preventing completion of the exam scheduling. These all recite
steps to establish a commercial interaction, i.e., managing relationships or
interactions between people, in this case, in a medical context.2
“As many cases make clear, even if a process of collecting and
analyzing information is ‘limited to particular content’ or a particular
‘source,’ that limitation does not make the collection and analysis other than
abstract.” SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168 (Fed.
Cir. 2018). The “character of [the] information simply invokes a separate
category of abstract ideas.” Id. Moreover, “[a] claim does not cease to be
abstract for section 101 purposes simply because the claim confines the
abstract idea to a particular technological environment in order to effectuate
a real-world benefit.” In re Mohapatra, 842 F. App’x 635, 638 (Fed.
Cir. 2021). Nor does a “[g]roundbreaking, innovative, or even brilliant
discovery . . . by itself satisfy the § 101 inquiry.” Assoc. for Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013).

2 Although we and the Examiner describe, at different levels of abstraction,
to what the claims are directed, it is recognized that “[a]n abstract idea can
generally be described at different levels of abstraction.” Apple, Inc. v.
Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016). That need not and, in
this case does not, “impact the patentability analysis.” Id. at 1241.
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We do not find any indication in the Specification that the claimed
invention effects a transformation or reduction of a particular article to a
different state or thing. Nor do we find anything of record that attributes an
improvement in computer technology or functionality to the claimed
invention or that otherwise indicates that the claimed invention “appl[ies],
rel[ies] on, or use[s] the judicial exception in a manner that imposes a
meaningful limit on the judicial exception, such that the claim is more than a
drafting effort designed to monopolize the judicial exception.” (See 2019
Guidance at 54–55.)
Nonetheless, Appellant argues that the recited “technology improves
an individual user’s access to medical treatment and information, this
technology also introduces complexities that current systems cannot handle”
including “an improved user interface for scheduling patients that is
dynamically updated with specific questions based on the inputs received
through the user interface.” (Appeal Br. 11–12.) Appellant argues that “this
type of improved user interface aligns with the decision in Core Wireless
Licensing v. LG Electronics.” (Id. at 12.) We do not find this argument
persuasive.
In Core Wireless Licensing S.A.R.L. v. LG Electronics., Inc., 880 F.3d
1356 (Fed. Cir. 2018), the claims were “directed to an improved user
interface.” Core Wireless, 880 F. 3d at 1362. Specifically:
Claim 1 of the ‘476 patent requires “an application summary
that can be reached directly from the menu,” specifying a
particular manner by which the summary window must be
accessed. The claim further requires the application summary
window list a limited set of data, “each of the data in the list being
selectable to launch the respective application and enable the
selected data to be seen within the respective application.” This
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claim limitation restrains the type of data that can be displayed
in the summary window. Finally, the claim recites that the
summary window “is displayed while the one or more
applications are in an un-launched state,” a requirement that the
device applications exist in a particular state. These limitations
disclose a specific manner of displaying a limited set of
information to the user, rather than using conventional user
interface methods to display a generic index on a computer.
Id. at 1362–63 (emphasis added). In contrast, Appellant’s argument is that
the content of the medical data presented constitutes the improvement. (See,
e.g., Appeal Br. 12.)
Appellant also seeks to analogize claim 2 to the claims in McRO, Inc.
v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016). (Id.
at 15–16.) Appellant argues that “like the claims at issue in McRO, the
currently pending claims recite a specific process for selecting notifications
(both in number and type) displayed within a user interface that allows users
to schedule medical procedures in an efficient and accurate manner.” (Id.
at 15.) We do not find this argument persuasive.
Claim 2 simply uses a generic processor, graphical user interface, and
memory (“notification data structure”)3 to perform the abstract idea. (See
Spec. ¶¶ 26–28.) It does not improve the processor, graphical user interface,
or memory. As noted above, the asserted improvement here is to the content
of the data presented. (See, e.g., Appeal Br. 16.) “The claimed
improvement [in McRO] was to how the physical display operated (to
produce better quality images), unlike (what is present here) a claimed
improvement in [the abstract idea] with no improved display mechanism.”
SAP Am., Inc., 898 F.3d at 1167.

3 Figure 1 shows the notification data structure as part of a generic mass
storage device, i.e., memory. (Figure 1; see also Spec. ¶ 26.)
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In view of the above, we determine that claim 2 sets forth a method
for a screening procedure to be completed in scheduling a patient for a
medical examination. The claim steps recite observation, evaluation, and
judgment. Under the 2019 Guidance, these are identified as mental
processes, and thus, an abstract idea. (See 2019 Guidance at 52.)
Additionally, claim 2 recites steps to establish a commercial interaction, i.e.,
managing relationships or interactions between people. Under the 2019
Guidance, these are identified as certain methods of organizing human
activity, and thus, an abstract idea. (See id.)
In short, claim 2 is “focused on providing information to [the user]
. . . , not on improving computers or technology.” Trading Techs. Int’l, Inc.
v. IBG LLC, 921 F.3d 1378, 1384 (Fed. Cir. 2019). “Like Electric Power,
the purported advance ‘is a process of gathering and analyzing information
of a specified content, then displaying the results, and not any particular
assertedly inventive technology for performing those functions.’” Id.
at 1385 (quoting Elec. Power Grp., 830 F.3d at 1354). “The advance is only
at the abstract level of computerization because [the claim] fails to set forth
specific techniques for processing the data, instead reciting known computer
techniques for automation of known processes.” Enco Sys., Inc. v. Davincia,
LLC, 845 F. App’x 953, 957 (Fed. Cir. 2021) (citing Univ. of Florida
Research Found., Inc. v. Gen. Elec. Co., 916 F.3d 1363, 1368 (Fed. Cir.
2019)).
Therefore, under prong one of the two prong test in the 2019
Guidance, claim 2 recites an abstract idea; and, under prong two, additional
elements in claim 2 do not “apply, rely on, or use the judicial exception in a
manner that imposes a meaningful limit on the judicial exception, such that
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the claim is more than a drafting effort designed to monopolize the judicial
exception.” (See 2019 Guidance at 54.) As such, under step one of the Alice
framework, the claim is directed to an abstract idea, and we move to step
two.
Step two of the Alice framework has been described “as a search for
an ‘ “inventive concept” ’ –i.e., an element or combination of elements that
is ‘sufficient to ensure that the patent in practice amounts to significantly
more than a patent upon the [ineligible concept] itself.’” Alice, 573 U.S.
at 217–18 (brackets in original) (quoting Mayo, 566 U.S. at 72–73). Under
step two, we examine, inter alia, whether a claim element or combination of
elements “[a]dds a specific limitation or combination of limitations that are
not well-understood, routine, conventional activity in the field, which is
indicative that an inventive concept may be present.” (2019 Guidance
at 56.)
Taking the claim elements separately, the functions performed in
claim 2 by the generic processor(s), graphical user interface, and
memory/notification data structure to receive, select, display, and analyze
data are purely conventional. Receiving data, selecting data, displaying
data, and analyzing data are well-understood, routine, and conventional
functions previously known to the industry. See Elec. Power Grp., 830 F.3d
at 1356 (The claims “do not include any requirement for performing the
claimed functions of gathering, analyzing, and displaying in real time by use
of anything but entirely conventional, generic technology. The claims
therefore do not state an arguably inventive concept . . . .”); see also Versata
Dev. Group, Inc., 793 F.3d at 1335 (determining claims requiring
“arranging, storing, retrieving, sorting, eliminating, determining” to “involve
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the normal, basic functions of a computer” and to be “conventional, routine,
and well-known”), In re Katz Interactive Call Processing Patent Litig.,
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.”).
Considered as an ordered combination, the generic processor(s),
graphical user interface, and memory/notification data structure add nothing
that is not already present when the limitations are considered separately.
For example, claim 2 does not purport to improve the functioning of the
processor(s), graphical user interface, or memory themselves. Nor does it
effect an improvement in any other technology or technical field. Instead,
claim 2 amounts to nothing significantly more than an instruction to apply
the abstract ideas using generic computer components performing routine
computer functions. That is not enough to transform an abstract idea into a
patent-eligible invention. See Alice, 573 U.S. at 225–26.
We are not persuaded that the Examiner erred in rejecting claim 2.
Claims 4–9, 11–16, and 18–21 are not separately argued and fall with
claim 2. See 37 C.F.R. § 41.37(c)(1)(iv).
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CONCLUSION
The Examiner’s rejection of claims 2, 4–9, 11–16, and 18–21 under
35 U.S.C. § 101 is affirmed.
Specifically:
Claims
Rejected
35 U.S.C. § Reference/Basis  Affirmed Reversed
2, 4–9,
11–16,
18–21
101 Eligibility 2, 4–9,
11–16,
18–21

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

AFFIRMED