Robert M. Herzog

Patent Trials and Appeals Board

Aug 13, 2019

12016864 - (D) (P.T.A.B. Aug. 13, 2019)

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.
12/016,864 01/18/2008 Robert M. Herzog RH___1 5162
59830 7590 08/13/2019
TED SABETY, c/o Sabety +associates, PLLC
733 Third Avenue
15th Floor
New York, NY 10017
EXAMINER
COBANOGLU, DILEK B
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
08/13/2019 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):
TED@SABETY.NET
docket@sabety.net
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ROBERT M. HERZOG
____________________

Appeal 2018-006403
Application 12/016,8641
Technology Center 3600
____________________

Before CARL W. WHITEHEAD JR., JEREMY J. CURCURI, and
ADAM J. PYONIN, Administrative Patent Judges.

PYONIN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a). We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 The real party in interest is listed as eCaring, Inc. Appeal Br. 2.
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STATEMENT OF THE CASE
Introduction
The Application is directed to a “method and system for collecting
data that employs selectable pictographs, as presented via an interface, that a
user can select[,] . . . . as applied to the health care field.” Abstract. Claims
12, 13, and 39–49 are pending; of these, claims 12, 13, 44, and 45 are
independent. Appeal Br 17–23.2 Claim 12 is reproduced below for
reference:
12. A method executed by a computer system of managing
data representing a health plan of care comprised of data
representing a set of treatments and activities, delivered to a
patient with a health condition, said method comprising:
transmitting to a computer device with a display screen
data representing a plurality of pictographs in order that the
device display the plurality of pictographs on the display screen,
said plurality of pictographs each being a graphic representation
of a corresponding at least one predetermined possible healthcare
tasks to be applied to the patient;
receiving from the computer device data representing a
selection of at least one of the displayed pictographs;
determining data representing a description of the
healthcare task applied to the patient by using the received
selection data to locate the data representing the description in a
data storage component of the computer system;
storing in a data record associated with the patient, data
representing the determined description of the at least one
healthcare task applied to the patient; and
using the computer system to automatically determine
whether the description of the health care task applied to the
patient is in compliance with a predetermined healthcare
treatment requirement for the plan of care, by extracting one or

2 Appellant did not number the pages of the Appeal Brief. We refer to the
Appeal Brief as if its pages were consecutively numbered beginning with
first page, which contains the heading “APPEAL BRIEF.”
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more health states from the data record associated with the
patient,
determining the healthcare treatment requirement in
dependence on the extracted health state data and applying to a
data set comprised of the extracted health state data and the data
representing the at least one of the set of treatments and activities
in combination with the data representing the description of the
healthcare task a set of logic rules that encode an at least one
compliance rules associated with the healthcare treatment
requirement for the plan of care.

References and Rejections
Claims 12, 13, and 39–49 stand rejected under 35 U.S.C. § 101 as
being patent ineligible. Final Act. 2.
Claims 12, 13, and 39–49 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Cule (US Patent No. 7,107,547 B2; Sept. 12, 2006)
and Hussain (US 2006/0282302 A1; Dec. 14, 2006). Final Act. 5.

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments. Arguments Appellant could have made but chose not to make
are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv). We discuss each
of the statutory grounds of rejection, in turn.

A. 35 U.S.C. § 101
The Examiner determines the claims are patent ineligible under 35
U.S.C. § 101, because the claims are “directed to a judicial exception (i.e., a
law of nature, a natural phenomenon, or an abstract idea) without
significantly more.” Final Act. 2; see also Alice Corp. Pty. Ltd. v. CLS Bank
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Int’l, 573 U.S. 208, 217 (2014) (describing the two-step framework “for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts”).
After the docketing of this Appeal, the USPTO published revised
guidance on the application of § 101 (“Guidance”). See USPTO’s 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) (“Memorandum”). Under the Guidance, the office first looks 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)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, does the Office 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 Memorandum.

I. Step 2A, Prong One
Appellant argues the Examiner errs in determining claim 12 is
abstract, because the “Examiner’s patentability analysis overlooked the
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specific limitations . . . that relate to converting pictographic selection to
health state or healthcare task data and vice-versa. In addition, the claim
limitations include determination of follow-on pictographic data
transmissions based on the data.” Appeal Br. 8. Appellant contends, thus,
“if one manages data representing a health plan of care without practicing
the claim limitations involving receiving a selection of pictographic
representations, or conversion of those selections into health task or health
state data (or conversion of task description data into outgoing pictographs),
that ‘managing’ activity would be outside the scope of Appellant’s claims.”
Id. at 10.
The Guidance provides that “[f]or abstract ideas, Prong One
represents a change as compared to prior guidance,” and the Office will
“[i]dentify the specific limitation(s) in the claim . . . [to] determine whether
the identified limitation(s) falls within the subject matter groupings of
abstract ideas.” Memorandum, 84 Fed. Reg. at 54. Pursuant to the
Guidance, we are not persuaded the Examiner errs in determining claim 12
includes limitations that fall within a judicial exception. See Ans. 3
(“limitations of the claims determined to comprise the abstract idea”).
Claim 12 recites a method of managing data representing a health plan of
care, including the following steps: “transmitting . . . in order that the device
display the plurality of pictographs on the display screen, said plurality of
pictographs each being a graphic representation of a corresponding at least
one predetermined possible healthcare tasks to be applied to the patient” and
“receiving . . . data representing a selection of at least one of the displayed
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pictographs.” These steps cover providing a list of icons3 to a person and
having the person select an icon, and are thus any of “social activities,
teaching, and following rules or instructions,” which are examples of
“managing personal behavior or relationships or interactions between
people.” Memorandum 84 Fed. Reg. at 52. These recitations are thus the
abstract concept of “[c]ertain methods of organizing human activity.” Id.
Claim 12 further recites the following steps:
determining data representing a description of the healthcare task
applied to the patient by using the received selection data to
locate the data representing the description . . . ;
storing in a data record associated with the patient, data
representing the determined description of the at least one
healthcare task applied to the patient; and
. . . determine whether the description of the health care task
applied to the patient is in compliance with a predetermined
healthcare treatment requirement for the plan of care, by
extracting one or more health states from the data record
associated with the patient,
determining the healthcare treatment requirement in dependence
on the extracted health state data and applying to a data set
comprised of the extracted health state data and the data
representing the at least one of the set of treatments and activities
in combination with the data representing the description of the
healthcare task a set of logic rules that encode an at least one
compliance rules associated with the healthcare treatment
requirement for the plan of care.
These limitations are also “following rules or instructions,” and thus
comprise the “managing personal behavior or relationships or interactions
between people” category of “[c]ertain methods of organizing human

3 “[P]ictograms, pictographs and/or icons [are ]hereafter collectively
‘pictographs.’” Spec. ¶ 24.
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activity.” Memorandum, 84 Fed. Reg. at 52. Furthermore, these limitations
are steps of “observation, evaluation, judgment, opinion” and thus comprise
“[m]ental processes.”4 Id.
Accordingly, claim 12 “recites a judicial exception [and] requires
further analysis in Prong Two” of the Guidance. Memorandum, 84 Fed.
Reg. at 54.

II. Step 2A, Prong Two
We are also not persuaded the Examiner’s rejection is in error
pursuant to Step 2A, Prong Two of the Guidance. Appellant contends the
claim recites “a solution to the problem of a language barrier between the
language used in the text data used in patient data records and a lack of
fluency in that language of the actual care giver in the hospital.” Appeal Br.
12. Appellant further contends the claimed computer “is being used to
automate” the recited process. Id. The claimed use of automation, however,
does not integrate the recited judicial exceptions into a practical application.
See OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir.
2015) (“[R]elying on a computer to perform routine tasks more quickly or
more accurately is insufficient to render a claim patent eligible.”). Nor are
we persuaded the claim includes a technical solution to a technical problem,
as the benefits of the claimed system accord to the user rather than to the

4 We note the display and storage of pictographs and other data can be done
on paper, such as within paper medical records (see, e.g., Spec. ¶ 9; Hussain
¶ 4), and “[c]ourts 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. v.
SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015); Memorandum fn. 14.
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computing system(s). See Ans. 6; Spec. ¶ 14 (“Selection of relevant
icons/pictographs allows a user to readily document and/or record a patient’s
condition, both current and historical.”); cf Trading Techs. Int’l, Inc. v. IBG
LLC, No. 2017-2257, 2019 WL 1716242, at *3 (Fed. Cir. 2019) (“This
invention makes the trader faster and more efficient, not the computer. This
is not a technical solution to a technical problem.”).
We determine the additional recited limitations, including the
computer device and the computer system, do not “offer[] a meaningful
limitation beyond generally linking ‘the use of the [method] to a particular
technological environment,’ that is, implementation via computers.”” Alice,
573 U.S. at 226; Memorandum, 84 Fed. Reg. at 55.
Accordingly, we determine claim 12 does not integrate the judicial
exception into a practical application. See Memorandum, 84 Fed. Reg. at
54. As the “claim recites a judicial exception and fails to integrate the
exception into a practical application” (id. at 51), “the claim is directed to
the judicial exception” (id. at 54).

III. Step 2B
We agree with the Examiner that the claimed additional elements,
individually and in combination, do not amount to significantly more than
the judicial exception itself. See Final Act. 17; see also Memorandum, 84
Fed. Reg. at 56. Appellant has not shown the Examiner errs in determining
that the claimed computer elements are generic components and steps that
are well-understood, routine, and conventional. See Final Act. 3–4; see also
Spec. ¶¶ 27, 63, 75, 78, 80, and 87–117; Alice, 573 U.S. at 226.
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Accordingly, we agree with the Examiner that claim 12 is patent
ineligible. Regarding remaining independent claims 13, 44, and 45,
Appellant quotes various limitations, but provide no separate substantive
arguments. See Appeal Br. 8–10, 13. Thus, for same reasons as discussed
above, we are not persuaded of error in the eligibility rejection of these
claims, or the dependent claims.

B. 35 U.S.C. § 103
Appellant argues the Examiner’s obviousness rejection of claim 12 is
in error, because “the device in Cule is merely an output device for display
to care givers, not an interactive system that includes input capabilities used
by the care givers as claimed by Appellant.’” Appeal Br. 13. Appellant
contends that “Cule . . . does not disclose anything other than the ‘creation’
of the bedside printed ‘image,’” which is “lacking [] any disclosure that the
system takes as input a selection of pictographic images that is then used to
determine data representing the patient health state data or a healthcare task
conducted on the patient” as required by the claim. Id. at 14–15.
Appellant’s arguments are unpersuasive of error because they attack
Cule’s teachings individually and fail to address the Examiner’s findings
with respect to the combination of Cule and Hussain.5 See Final Act. 19; In
re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-
obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of

5 We also note claim 12 does not recite terms such as “care givers” or
“interactive,” and such unclaimed elements do not impart patentability to the
claim. Contra Appeal Br. 13.
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references.”). The Examiner correctly relies on Cule for teaching the display
and selection of pictographs relating to data for a patient’s health state,
within the meaning of the claim. See Final Act. 5–6; Cule Fig. 3, Abstract,
1:40–57, 2:17–53 (“[A]llowing a user to select with the user interface
selection device one or more icons from the toolbar and displaying each of
the selected icons on an image representative of the patient. Each of the
icons corresponds to a condition of a patient.”); 5:44–45 (“[S]electing the
one icon from the toolbar automatically selects the other icons.”).
The Examiner further finds, and Appellant does not challenge, that
one of ordinary skill would modify Cule’s pictograph teachings with
“Hussein’s system for ‘task creation, task monitoring queuing, task
modification, task sharing, and task completion’” in order “to improve
workflow or [patient] outcomes (Hussain; par. 143).” Final Act. 19; see also
Final Act. 7–8; Cule 6:46–47 (“Each of the icons 102 may convey a basic
health care plan goal.”); Hussain ¶ 55. Accordingly, Appellant does not
show the Examiner errs in finding the disputed limitations—including
determining data relating to a patient task or health state based on a selection
of an icon—to be obvious in view of the combination of Cule’s health
management system using icons and Hussain’s system for managing health
tasks. See Final Act. 5–8, 18–19; see also Ex parte Frye, 94 USPQ2d 1072,
1075 (BPAI 2010) (precedential) (“[T]he Board will not, as a general matter,
unilaterally review . . . uncontested aspects of the rejection.”).
We note that Appellant raises new arguments in the Reply Brief
regarding the principle of operation of Cule and that Cule teaches away from
the claimed invention. See Reply Br. 6, 9. The new arguments are not
responsive to an argument raised in the Examiner’s answer or otherwise
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shown to be provided for good cause. See 37 C.F.R. § 41.41(b)(2)(37 C.F.R.
§ 41.41(b)(2) (“Any argument raised in the reply brief which was not raised
in the appeal brief, or is not responsive to an argument raised in the
examiner’s answer, including any designated new ground of rejection, will
not be considered by the Board for purposes of the present appeal, unless
good cause is shown.”); see also Ex parte Borden, 93 USPQ2d 1473, 1473–
74 (BPAI 2010) (informative opinion). Accordingly, the new arguments are
waived.
We sustain the Examiner’s obviousness rejection of independent
claim 12. Appellant does not provide separate substantive arguments on the
remaining claims. See Appeal Br. 13–16. Thus, for same reasons as
discussed above, we are not persuaded of error in the obviousness of claims
13 and 39–49.

DECISION
The Examiner’s decision rejecting claims 12, 13, and 39–49 is
affirmed.
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