Richard Allen. Robbins et al.

Patent Trials and Appeals Board

May 29, 2020

2018002934 (P.T.A.B. May. 29, 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.
13/675,440 11/13/2012 Richard Allen Robbins 17845.00006 9437
136794 7590 05/29/2020
HUGHES HUBBARD & REED LLP
ONE BATTERY PARK PLAZA
NEW YORK, NY 10004
EXAMINER
TOMASZEWSKI, MICHAEL
ART UNIT PAPER NUMBER
3686
MAIL DATE DELIVERY MODE
05/29/2020 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD

____________

Ex parte RICHARD ALLEN ROBBINS,
JUSTIN MARK BROCKIE, JAMES MICHAEL KELLY, ASIF ALI,
MOJAHEDUL HOQUE ABUL HASANAT, OMAR FARUQ,
SAZZAD RAFIQUE, TAHSEEN MOHAMMAD, UMMY HABIBA,
SURAIYA PARVEEN, and JEREMY IAN SCHULMAN ROBBINS
____________

Appeal 2018-002934
Application 13/675,4401
Technology Center 3600
____________

Before JOSEPH A. FISCHETTI, BIBHU R. MOHANTY, and
BRUCE T. WIEDER, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

Appellant has filed a Request for Rehearing (hereinafter “Req.
Reh’g”) under 37 C.F.R. § 41.52(a)(3) of our Decision entered on February
25, 2020 (hereinafter “Decision”).

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 Therap Services,
LLC. Appeal Br. 6.

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Our Decision affirmed the Examiner’s rejection of claims 2–4, 6–11,
101, and 103–106 under 35 U.S.C. § 101. Decision 20. For the reasons
identified below, we deny the Request for Rehearing.

REQUEST FOR REHEARING ARGUMENTS
Appellant asserts error because:
Although the Board stated that it reviewed “all the arguments
Appellant has submitted” (Decision at 13), the Board clearly
overlooked Appellant’s Finjan arguments, as Finjan is neither
addressed nor even cited, and the sections of Appellant’s Reply
brief or the Hearing transcript raising those arguments are not
specifically mentioned anywhere in the Decision. Decision at
1-20.
Req. Reh’g 3.
First, Appellant does not quote the full text of our statement. In fact,
our statement also states, “We find that our analysis above substantially
covers the substance of all the arguments, which have been made.”
Decision 13. Thus, we did notify Appellant that by our analysis, the
substance of all arguments was covered, and, as is shown below, this did
occur.
Thus, we disagree with Appellant that any missing reference to
Finjan, Inc. v. Blue Coat Systems, Inc., 879 F.3d 1299 (Fed. Cir. 2018) in
our Decision constitutes error. Appellant’s pinpoint cite to Finjan, Inc. is,
“[s]tarting at step one [of the Alice Corp. v. CLS Bank Int’l, 573 U.S. 208
(2014) two-step inquiry], we must first examine the ‘844 patent’s ‘claimed
advance’ to determine whether the claims are directed to an abstract idea.”
Finjan, 879 F.3d at 1303 (citing Affinity Labs of Tex., LLC v. DIRECTV,
LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016), Reply Br. 4–5. However,
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Affinity Labs is now four years old. The further recited portion of the
Finjan, Inc. opinion quotes Enfish, stating, “[i]n cases involving software
innovations, this inquiry 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., 879 F.3d at 1303 (quoting Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335–36 (Fed. Cir. 2016)). Thus, the rule
of law to be taken from Finjan is that of Enfish which we cited in our
Decision on pages 6–7.
Appellant did in fact argue Enfish on page 38 of the Appeal Brief,
asserting, the claims “recite[] limitations that advance the prior art (as
admitted by the Examiner) and includes ‘benefits’ that represent an
improvement in the way video healthcare information is processed that was
heretofore unknown.” (Appeal Br. 38.)
And our Decision responded in kind to this argument finding,
“[a]lthough the claims purport to improve the way video healthcare
information is processed, our reviewing court has held that speed and
accuracy increases stemming from the ordinary capabilities of a general
purpose computer ‘do[] not materially alter the patent eligibility of the
claimed subject matter.’ Bancorp Servs., L.L.C. v. Sun Life Assurance Co.
of Can. (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012).” Decision 17–
18.
Notwithstanding, the Finjan, Inc. decision does not change the
outcome of our Decision. The facts in Finjan, Inc. like those of Enfish, are
incongruent with what is recited in claim 106 before us on appeal. In
Finjan, Inc., the court held that the “method of claim 1 [of the ’844 patent]
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employs a new kind of file that enables a computer security system to do
things it could not do before.” Finjan, 879 F.3d at 1305. By contrast, we
applicably found:
Claim 106 does not improve another technology, because
neither storing an authorization profile nor blurring a portion
of information, as recited in the claims, involves improving a
technology. Guidance, 84 Fed. Reg. at 55; see also MPEP §
2106.05(a). Because no more than a generic computer is
required, the claim also does not define, or rely on, a
“particular machine.” MPEP § 2106.05(b).

Decision 10–11. Nor has Appellant provided evidence showing that the
claim implements its process with other than from the ordinary capabilities
of a general purpose computer. Thus, nothing in independent claim 106
purports to improve computer functioning or “effect an improvement in any
other technology or technical field.” Alice, 573 U.S. at 225.
Appellant next states that,
Appellant has not argued that the claimed improvement lies in
increasing the speed or accuracy of an existing process.
Rather, as set forth above, the claims provide an entirely new
process that addresses an unsolved problem in preventing
unauthorized access to video healthcare information. The
Board’s mischaracterization of this improvement as a mere
“speed and accuracy increase[]” indicates that the Board
significantly misapprehended the “claimed advance” over the
prior art, and rehearing is requested.
Req. Reh’g 4–5.
We disagree with Appellant that the board mischaracterized
Appellant’s “new process” argument that “improv[ ing] the way video
healthcare information is processed” (Decision 17), encompasses a “new
process that addresses an unsolved problem in preventing unauthorized
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access to video healthcare information.” Req. Reh’g 5. Regardless,
Appellant’s argument is not determinative here because a novel and non-
obvious claim directed to a purely abstract idea is, nonetheless, patent-
ineligible. See Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566
U.S. 66, 90 (2012); see also Diamond v. Diehr, 450 U.S. 175, 188–89
(1981) (“The ‘novelty’ of any element or steps in a process, or even of the
process itself, is of no relevance in determining whether the subject matter
of a claim falls within the § 101 categories of possibly patentable subject
matter.”).
Appellant next argues, “[t]he Board’s ‘directed to’ analysis omits
recited claim elements and fails to consider the claims ‘in light of the
specification,’ and is thus both incorrect and an unpermitted
oversimplification of the subject matter of the claim.” Req. Reh’g. 6.
We disagree with Appellant. That claim 106 includes more words
than the phrase the Examiner used to articulate the abstract idea, and that
the Examiner, thus, articulates the abstract idea at a higher level of
abstraction than would Appellant is, an insufficient basis to persuasively
argue that the claim language has been mischaracterized or that the
Examiner has failed to consider the claims as a whole. Although we,
Appellant 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.” See id. at 1241.
Appellant next argues, “caseloads are ‘non-conventional and non-
generic’ (Appeal Br. 42–43) and are inventive programming. Thus, the
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claims require computers to perform non-generic functions, including the
unprecedented function of applying caseload analysis to video data.” Req.
Reh’g 7.
We disagree with Appellant. We found that the device limitations of
claim 106 amount to only generically recited items, namely:
“a video camera,” “a computer system having a memory and a
processor,” and “a transmission link.” These components are
described in the Specification at a high level of generality. See
Spec. 5:21–25, 6:1–17, Fig. 1. We fail to see how the generic
recitations of these most basic computer components and/or of
a system so integrates the judicial exception as to “impose[] a
meaningful limit on the judicial exception, such that the claim
is more than a drafting effort designed to monopolize the
judicial exception.” Guidance, 84 Fed. Reg. at 53.
Decision 10. Our Decision further found that the definition of “caseloads”
“specif[ies] which individuals and which programs the user is allowed to
access information about. The actions a user is allowed to perform on that
information in an embodiment of the system is specified by security access
rules, or just rules.” Decision 18. Accordingly, we found that the term
“caseloads,” by its definition is in fact an abstract idea. Authorization
information and rules are mental processes. Id. In addition, as discussed
above, the functions of the software are directed to abstract ideas and not
technical improvements, and the functions are performed using a generic
computer. As held in BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1281,
1290–91 (Fed. Cir. 2018), “[i]f a claim’s only ‘inventive concept’ is the
application of an abstract idea using conventional and well-understood
techniques, the claim has not been transformed into a patent-eligible
application of an abstract idea.” (Citing Berkheimer v. HP Inc., 881 F.3d
1360, 1370 (Fed. Cir. 2018) (holding claims lacked an inventive concept
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because they “amount to no more than performing the abstract idea of
parsing and comparing data with conventional computer components”)).
Concerning Appellant’s citations (Req. Reh’g 8–9) to “[r]ecent
decisions of the Board,” we are not bound by a non-precedential decision of
another panel of the Board.
Citing inter alia to Berkheimer, Appellant again argues error because
whether subject matter is “well-understood, routine, and
conventional” is a question of fact, and the Examiner’s
purported finding is entirely conclusory, is completely
unsupported by evidence, and fails to address whether the
claims, as a whole, include “well-understood, routine, and
conventional” subject matter to a skilled artisan in the relevant
field, i.e., in the ‘electronic healthcare record’ industry.

Req. Reh’g 10 (emphasis omitted).
We disagree with Appellant. According to Appellant’s reading of
Berkheimer, evidentiary support would always be required for all Alice step
two determinations. This simply is not what the Federal Circuit stated in
Berkheimer. There, the Federal Circuit made clear that “not every § 101
determination contains genuine disputes over the underlying facts material
to the § 101 inquiry.” Berkheimer, 881 F.3d at 1368. In fact, the Federal
Circuit in Berkheimer did not require evidentiary support for independent
claim 1 because “[t]he limitations [of claim 1] amount to no more than
performing the abstract idea of parsing and comparing data with
conventional computer components.” Id. at 1370.
Citing to the Specification at page 2, line 21 – page 4, line 4,
Appellant argues the “Specification make[s] clear that blurring of video
data based on access rules was neither routine, conventional, nor well-
understood.” Req. Reh’g 11.
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We disagree with Appellant. First, our decision made the relevant
findings that:
Taking the claim elements separately, the function
performed by the computer at each step of process is purely
conventional. Using a computer to record, transmit, store,
determine, and apply decision criteria to data and modify the
data as a result amounts to electronic data query and
retrieval—one of the most basic functions of a computer. All
of these computer functions are well-understood, routine,
conventional activities previously known to the industry. See
Elec. Power Grp., 830 F.3d at 1354; see also In re Katz
Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316
(Fed. Cir. 2011)

Decision 12. Against this finding, Appellant in its Request directs us, inter
alia, to the Specification at page 2, line 31 – page 3, line 1 which describes
that “a staff can video an individual and then submit that video...,” further
showing that the practice of videoing by staff of an individual was
conventional. As to the blurring aspect of the video practiced by Appellant,
we found in our Decision that the blurring of data, e.g., redacting, is an
abstraction and the Specification does not limit blurring by a specific
technology, but can be accomplished by “any and all means.” Decision, 9,
19.
Concerning Mr. Robbins declaration,2 our decision found:
Simply because the declarant concludes “[b]lurring video
healthcare data was not a well understood, routine, conventional
activity previously known to the electronic healthcare record
industry” (Appeal Br. 45), is not sufficient evidence as to why
such is not a well understood, routine, conventional activity.
The statement is itself conclusory. Moreover, the claim does

2 Declaration of Richard A. Robbins, dated May 25, 2017.
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not recite how this blurring is accomplished. It only recites the
idea of blurring by any and all means.

Decision 18–19.
Against this finding, Appellant in its Request cites to paragraphs 5–9
of the Declaration and asserts that its declaration “includes numerous
details supporting Mr. Robbins’s cited statement.” Req. Reh’g 11. But, the
only specific argument advanced by Appellant is that, the declaration
explains why “there was ‘no practical way to review or analyze large
amount[s] of video healthcare information containing the personal
information of many individuals.’” Id. (emphasis omitted). But, this
explanation does not tell us how the known use of blurring faces is not a
well-understood, routine, conventional activity.
Appellant’s other arguments, including those directed to now-
superseded USPTO guidance, have been considered but are not persuasive
of error. (See 2019 Revised Guidance, 84 Fed. Reg. at 51 (“Eligibility-
related guidance issued prior to the Ninth Edition, R–08.2017, of the MPEP
(published Jan. 2018) should not be relied upon.”)).)
CONCLUSION OF LAW
For the reasons above, we are not convinced that Appellant has
shown, with particularity, points believed to have been misapprehended or
overlooked in our Decision. See 37 C.F.R. § 41.52(a)(1) (2011).
Outcome of Decision on Rehearing:
Claims

35 U.S.C. § Reference(s)/Basis Granted Denied
2–4, 6–11,
101, 103–106
101 Eligibility 2–4, 6–11,
101, 103–
106
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Final outcome of appeal after rehearing:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
2–4, 6–11,
101, 103–106
101 Eligibility 2–4, 6–11,
101, 103–
106

REHEARING DENIED