10460788 - (D) (P.T.A.B. Sep. 4, 2019)

Sumathi Paturu

Patent Trials and Appeals BoardSep 4, 2019

10460788 - (D) (P.T.A.B. Sep. 4, 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. 10/460,788 06/13/2003 Sumathi Paturu 4674 7590 09/04/2019 DR. SUMATHI PATURU, B.SC, MBBS, MD 401, 19TH STREET SOUTH, APT 308 BIRMINGHAM, AL 35233 EXAMINER SOREY, ROBERT A ART UNIT PAPER NUMBER 3626 MAIL DATE DELIVERY MODE 09/04/2019 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 SUMATHI PATURU ____________________ Appeal 2018-0055761 Application 10/460,788 Technology Center 3600 ____________________ Before ELENI MANTIS MERCADER, NORMAN H. BEAMER, 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 inventor, Sumathi Paturu, is listed as the real party in interest. App. Br. 4. Appeal 2018-005576 Application 10/460,788 2 STATEMENT OF THE CASE Introduction The Application is directed to a “cancer tracking system” used for “scheduling, tracking and filing.” Abstract. Claims 13–20, 25, and 26 are pending, of which claim 13 is the sole independent claim. App. Br. 50–56. Claim 13 is reproduced below for reference: 13. A method of filing incorporating a ‘Tracking System’ for Breast, Prostate, and Colorectal Cancer screenings, intended for a ‘periodic follow-up recall’ of the ‘due-to be screened’ population, said method carried out by means of manually operable paper filings, subject to a ‘built-in automated tracking system’ of ‘unlimited time-line’, ‘calendar precision’, and of a ‘cyclical perpetual course’, to be improvised in a filing of ‘Colorectal Cancer Screening’, and in a filing of ‘Breast and Prostate Cancer Screening’, either filing except otherwise specified, incorporating similar means and methods, as set forth below - (1) the filing is devised setting forth three sections: (a) ‘Patient Index’ section - for indexing all the patients’ records upon logging into the file, said section having A-Z alphabetical divisions, wherein month / date are used as a datum, (b) ‘Cancer Screening Information’ section - wherein the patients’ ‘cancer screening records’, each comprising of a ‘cancer screening protocol table’ in its entirety, are filed into 12 months divisions, (c) ‘Abnormal Reports’ section - devised for a detailed recordation of abnormal cancer screening reports and their needed interventions, (2) the patients’ cancer screening data needed of the said ‘periodic-recall’, is documented in the said ‘Cancer-Screening Protocol Tables’ of the said ‘Cancer Screening Information’ section, to be filed into its twelve-month divisions, marked by month tabs as January to December with years unmarked, said month divisions confining to page numbers in the range of 1–31, corresponding in dates / time to the days of the said calendar months, Appeal 2018-005576 Application 10/460,788 3 (3) each file’s scheduling, screening, and tracking of cancer screenings of patients involving the clinic’s comprehensive patient listing, are implemented upon logging into the file, by means and methods encompassing the (a) the pages of the said ‘Patient Index’ section, ‘Cancer-Screening Information’ section, and the ‘Abnormal Reports’ section, are respectively devised to encompass Patient- Index Tables, Cancer-Screening Protocol Tables, and Abnormal Reports Tables, in their entirety, (b) upon initiation of the filing, all age compatible patients’ records are entered into each month section of either file, as per their due-screening dates, the patients’ logging conforming to an alphabetical order of the clinic’s comprehensive patient-list, whether or not a patient’s cancer screening is currently due upon initial filing, said filed-in patients’ names thereafter stricken-off from the comprehensive patient-list, (c) further entering into the filing of all age- compatible patients of ‘random-visits’ with recordation of their screening-data, whether or not their cancer-screening is due in a current month, and whether or not they are scheduled or screened in a current month, said patients targeted in no alphabetical order, (d) the first column of ‘Dates of Last Screening’ (DLS) of a patient’s cancer-screening record’ is devised thereof, to documenting the past screening data, (e) the columns 1–5 of the said ‘cancer-screening record’, and the column-1 of a patient’s ‘Endoscopy Reminder’, are devised thereof for current / imminent data, (f) a patient’s most recent cancer screening date (when the said patient is not currently due for screening), or a patient’s currently scheduled date (when the said patient is currently due for screening) serving as erasable / changeable page number, is marked as ‘date and year’ (date / year) in the right upper corner of either patient’s cancer screening record, the said record filed in the corresponding screened or scheduled month of the said ‘Cancer Screening Information’ section, to be acted upon, as the due-time for scheduling or screening becoming current, Appeal 2018-005576 Application 10/460,788 4 (g) said erasable page number further changing upon a patient’s subsequent scheduling, when the said patient’s cancer screening record or the said endoscopy-reminder subject to moving into the said scheduled-month section of the file, with the scheduled-date as the page number, such linear movement in time however deemed for a ‘cyclical perpetual course’ and an ‘unlimited time-line tracking’ of the filing, as the ‘years are unmarked’ in the file-tabs, each patient’s record in each month’s division being annually revisited, (h) the 10 years longest time-line tracking of a post- colonoscopy screening being effectuated by the said ‘endoscopy- reminder’ having the 10 years post-colonoscopy due-date and year marked as its page number, to be filed in its anniversary month, and acted upon when the ‘due year’ becoming current, such time-line tracking similarly applicable for any near or remote cancer screening, such as 5 years post-sigmoidoscopy screening, or a periodic mammography screening, (i) a patient’s main colorectal cancer-screening record is devised to incorporate the whole screening data including that of an endoscopy, but the said record tracking only a ‘fecal-testing’, near or remote, whereas a breast / prostate cancer screening record is devised to incorporate and track all the involved screenings of either gender, (j) the said methods of filing imposing that on any current month, the patients’ records marked with the current date-corresponding page numbers to be the sole focus, effectuating a month’s short-term ‘cross-sectional tracking’, while the due-years, near or remote, also marked with / as the page number, to be the sole focus on any current year, effectuating an ‘unlimited’ ‘longitudinal-tracking’ as of the 10 years post-colonoscopy screening that the filing implements itself, said remote time-line tracking needing no system updating or monitoring thereof, in its longest / unlimited interim, (k) the said ‘tracking’ of the filing is ‘programmed’ to be ‘automated’, the latter by a calendar precision and regularity, subject to the patients’ records marked with the ‘due appointment dates / years’ as the page numbers being filed into the months sections similar as their appointments, with a ‘cyclical tracking’ of a ‘linear’ time-line ongoing, to the time the Appeal 2018-005576 Application 10/460,788 5 ‘due-screening’ becoming current, as marked by the dates / years, (l) the said ‘programming’ is subject to the devised method-steps as below - (a) the erasable page numbers of the patients’ records of the January-December month divisions confining to 1-31; (b) the said page number of a patient’s record in a month division being similar as the said patient’s due-to-be- screened date / year; (c) said page number accordingly changing upon a patient’s subsequent scheduling; (d) the ‘goal-directed’ movement destined for a patient’s record, to a different date / month similar as the patient’s newly ‘scheduled date’, effectuating said patient’s record to be encountered upon such date becoming current (e) the said ‘encountering’ of the patient’s record is subject to the ‘time-corresponding pages’ of a month- division being the ‘sole focus’ on a current date and year - materializing a near or remote ‘tracking’; (f) the annual revisiting of every month division being destined for a ‘cyclical’ ‘perpetual’ course of the filing, however deemed for a ‘linear’ calendar time-line, (m) the said filing encompassing means as the base substrate for the said function of ‘tracking’, is subject to the said devised processes / methods, to be ‘enabling’ such means. Rejections Claims 13–20, 25, and 26 stand rejected under 35 U.S.C. § 101 as being patent ineligible. Final Act. 2. Claims 13–20, 25, and 26 stand rejected under 35 U.S.C. § 112, second paragraph, as being indefinite. Final Act. 4. ANALYSIS We have reviewed the Examiner’s rejection 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). Appellant does Appeal 2018-005576 Application 10/460,788 6 not separately argue the claims. See App. Br. 15–49. We select claim 13 as representative. See 37 C.F.R. §41.37(c)(1)(iv). A. Subject Matter Eligibility The Examiner determines claim 13 is patent ineligible under 35 U.S.C. § 101 because it is directed to an abstract idea and does not include additional elements that are sufficient to amount to significantly more than the abstract idea. Final Act. 2–4, Ans. 3–6; see also Alice Corp. v. CLS Bank 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 mailing of the Answer and the filing of the Briefs in this case, 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”). Pursuant to the Guidance “Step 2A,” the office first looks to whether the claim recites: (1) Prong One: 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) Prong Two: 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 (pursuant to the Guidance “Step 2B”) look to whether the claim: Appeal 2018-005576 Application 10/460,788 7 (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. We are not persuaded the Examiner’s rejection is in error. We adopt the Examiner’s findings and conclusions as our own. We add the following primarily for emphasis and clarification with respect to the Guidance. I. Step 2A Prong One Appellant argues the Examiner’s analysis is in error, as the claim recites a “file” and because the claim meets other patentability requirements. See, e.g., App. Br. 15–21. Particularly, Appellant contends that in the instant invention, not only the statutory nature critical to the invention (prior art generic file that is statutory), but also the conditions of novelty, non-obviousness (the file processes are non-equivalent though analogous), and utility requirement are clearly met. App. Br. 17. We are not persuaded the Examiner’s rejection is in error. We determine limitations (1) (including subsections (a)–(c)), (2), and (3) (including subsections (a)–(m)) of claim 1 recite abstract concepts pursuant to the Guidance. See Final Act. 2–3. These limitations replicate steps taken by a health care practitioner while interacting with a patient because these limitations recite the performance of evaluation and judgement in (a) entering all age compatible patient’s records into the applicable file, (b) Appeal 2018-005576 Application 10/460,788 8 further entering into the filing of all age-compatible patients of ‘random- visits’ with recordation of their screening-data, and (c) entering a patient’s most recent cancer screening date (when the said patient is not currently due for screening), or a patient’s currently scheduled date (when the said patient is currently due for screening). See, e.g., Fig. 1 (depicting a file); Spec. 15:13–15 (“present information on clinically relevant actions - such as defining treatment plan for patient, identifying side effects based on previously identified cases/records present in the relevant databases.”). Thus, these claim limitations — steps taken by a health care practitioner while diagnosing and treating a patient — are “teaching, and following rules or instructions” which are “managing personal behavior or relationships or interactions between people.” Memorandum at 52. Under the Guidance, such limitations are the abstract concept of “[c]ertain methods of organizing human activity.” Id. The Guidance also provides that such limitations are steps of “observation, evaluation, judgment, opinion,” which are the abstract concept of “[m]ental processes.” Id.; see also Memorandum fn. 14, 15 (describing mental processes encompassing processes using pen/pencil and paper). Accordingly, we conclude the claim recites judicial exceptions pursuant to the Guidance. Prong Two Appellant contends that “the [u]tility requirements under 35 USC § 101” also “serve[] for the analysis of a ‘significantly more’ transformation” and that the “utility of the invention regards all said Appeal 2018-005576 Application 10/460,788 9 attributes” weighs “towards a ‘significantly more’ transformation [that is] objectively quantifiable, over the prior-art elements.” App. Br. 26. We are not persuaded the Examiner’s rejection is in error pursuant to Step 2A, Prong Two of the Guidance. As determined above, the disputed limitations are part of the recited abstract idea itself: the limitations elaborate on the manner in which the abstract organizing human activity and mental processes are to be performed. See Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Can. (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012). Thus, these limitations do not comprise “additional elements” under the Guidance. See Memorandum fn. 24. Further, although the claim recites functionality such as being “automated” and “programmed” (see, e.g., claim 13, limitation (3)(k)), the record does not indicate such steps require a computer or other technology (see claim 13 preamble, reciting “said method carried out by means of manually operable paper filings”). And even if any such technology was required, we determine the claim is ineligible pursuant to the Guidance. See Memorandum fn. 14; Versata Dev. Grp. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) (“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.”). Accordingly, we determine the claim does not integrate the judicial exceptions into a practical application. See Memorandum at 54. II. Step 2B We agree with the Examiner that the claimed elements and combination of elements do not amount to significantly more than the Appeal 2018-005576 Application 10/460,788 10 judicial exception itself. See Final Act. 3; Memorandum at 56. The Examiner finds, and we agree: [t]he claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claimed “base substrates” and “paper filings” are generic components that are configured to perform activities that are well-understood, routine, and conventional activities previously known to the industry. Final Act. 3; see also Fig. 1. Accordingly, we agree with the Examiner that independent claim 13 is patent ineligible, as well all claims dependent therefrom not separately argued. See App. Br. 15–27. B. Indefiniteness We agree with the Examiner that the subject matter encompassed by claim 13 cannot be reasonably understood without resort to speculation. Ans. 7. For example, the Examiner finds, and we agree, that [c]laim 13 recites a “built in” automated tracking system but it is not understood how [] the claim works to schedule, screen, and track targeted patients. Here an effect is being claimed, which is neither a means nor a process step. Ans. 7; see also Final Act. 5–7, Ans. 6–7. Appellant has not shown the Examiner’s findings are in error. Accordingly, we sustain the Examiner’s rejection of independent claim 13 and all claims dependent therefrom. C. Inventor Assistance Center We note the Appellant appears to be pursuing this application pro se. See App. Br. 1, 4, 49. For reference, the USPTO has launched a Pro Se Appeal 2018-005576 Application 10/460,788 11 Assistance Program “to help inventors meet their goals of protecting their valuable intellectual property.” https://www.uspto.gov/patents-getting- started/using-legal-services/pro-se-assistance-program (last accessed August 5, 2019).2 The USPTO also maintains an Inventor’s Assistance Center, which “is staffed by former Supervisory Patent Examiners and Primary Examiners who answer general questions concerning patent examining policy and procedure.” https://www.uspto.gov/learning-and- resources/support-centers/inventors-assistance-center-iac) (last accessed August 5, 2019).3 DECISION The Examiner’s decision rejecting claims 13–20, 25, and 26 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 2 The Pro Se Assistance Program can be contacted at email: innovationdevelopment@uspto.gov; toll free phone number: 866-767-3848. 3 The Inventors Assistance Center can be contacted at toll free phone number: 800-PTO-9199 (800-786-9199).