Sumathi Paturu

Patent Trials and Appeals Board

Dec 31, 2019

10460788 - (R) (P.T.A.B. Dec. 31, 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 12/31/2019
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
12/31/2019 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 2018-005576
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 REQUEST FOR REHEARING
Appellant1 requests a rehearing of the Decision on Appeal mailed
September 4, 2019 (the “Decision”), in which we affirmed the Examiner’s
rejections of claims 13–20, 25, and 26 under 35 U.S.C. §§ 101 and 112,
second paragraph. See Request for Rehearing filed October 28, 2019 (the
“Request”). We have reconsidered the Decision in light of Appellant’s
arguments; however, we are not persuaded of any error therein.

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 the
inventor, Sumathi Paturu. Appeal Br. 4
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DISCUSSION
In the Decision, we affirmed the Examiner’s rejection of the claims as
indefinite. See Decision 10–11. Additionally, we affirmed the Examiner’s
rejection of the claims pursuant to the U.S. Patent Office’s recently
published revised guidance on the application of 35 U.S.C. § 101. See
Decision 6–10; see also Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217
(2014) (Describing the two-step framework under 35 U.S.C. § 101, “for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts.”); USPTO’s 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Memorandum”).
Appellant requests rehearing of both parts of the decision. See
Request 4. We discuss each of the statutory rejections, below.

A. Indefiniteness Rejection of Claims
Requests for Rehearing are limited to matters “believed to have been
misapprehended or overlooked by the Board” in rendering the original
decision. 37 C.F.R. § 41.52(a)(1). With respect to our decision regarding
the Examiner’s indefiniteness rejection, the Request states that “[i]t is not
clear why the Board had commented that the subject matter encompassed by
claim 13 can not be reasonably understood without resort to speculation.”
Request 30. Appellant additionally argues that “[t]he elaborate [claim 13] is
all about scheduling and tracking.” Id.
The Examiner finds “[t]he plain language of claim 13 recites a ‘means
of manually operable paper filings’, but then recites ‘means and methods,’”
such that “is thus unclear whether the measures are a part of the means, an
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article of manufacture, or whether the measures are the steps of a method.”
Final Act. 5. The Examiner further finds “[c]laim 13 recites a ‘built in’
automated tracking system but it is not understood how of the claim works
to schedule, screen, and track targeted patients,” as the meaning of “built in”
is not clear. Id. at 6. The Examiner further identifies the claim terms
“means of manually operable paper filings” and “similar means” as being
unclear. Id. at 7.
We agree with the Examiner’s analysis. Appellant has not identified
portions of the Specification that explain the meaning of the identified claim
terms with sufficient clarity. See Ans. 6–7; see also Request 30–32.
Accordingly, we are not persuaded we misapprehended or overlooked any
points in determining “the subject matter encompassed by claim 13 cannot
be reasonably understood without resort to speculation.” Decision 10; Final
Act. 6.
Further, the Request states the following:
the Appellant redrafted the claims deleting the ‘objected
terminology’ by the Board, as indeed they are not necessary for
the invention to be effective and functional. They were
introduced to draw the attention of the Board to some unique
limitations of the invention that can be otherwise easily
overlooked in the narrow confines of claim drafting. The
amended claims are appended as Exhibit-1 for appraisal by the
Board, not without the knowledge that the Primary Examiner is
yet responsible for their entry and subsequent proceeds.

Request 5; see also “Exhibit-1” at Request 33–40. Appellant’s arguments
refer to claim amendments that have not been entered, as acknowledged in
the Request. See Request 5. Our review herein is limited to currently
pending claims. See MPEP § 1206.
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Appellant does not persuasively show we misapprehended or
overlooked matters in rendering the original decision; thus, we are not
persuaded the Examiner’s indefiniteness rejection is in error. See Decision
10, 11.

B. Patent Ineligibility Rejection of Claims
1. Correction to Citation in the Decision
As a preliminary matter, the Request notes an incorrect quotation
from Appellant’s disclosure appearing in the Decision. See Request 11, 31;
Decision 8. This quotation was used to support our determination that the
claim “limitations replicate steps taken by a health care practitioner while
interacting with a patient.” Decision 7. Appellant is correct that the quote
“was not contained in the specification of the Instant Invention.” Request
11. Thus, we amend the citation on page 8 of the Decision to include the
proper quote from the Specification. The correct citation should read: “See,
e.g., Fig. 1 (depicting a file); Spec. 13:14 (“After you fill in this data, make a
photocopy and file in each section.”).”2
This correction does not alter our decision upholding the Examiner’s
rejection, which was based on the specific claim limitations pursuant to the
USPTO guidance; the Specification was cited merely to support our
determination that the claims recite a judicial exception. See Decision 7–8;
Memorandum, 84 Fed. Reg. at 54.

2 This citation is to the Specification as originally filed on June 13, 2003; we
note that the file history contains numerous amendments to the
Specification, and should there be further prosecution, the Examiner may
wish to consider whether these amendments have introduced new matter into
the disclosure of the application. See MPEP § 608.04.
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2. Patent Ineligibility Arguments in the Request
Step 2A
Appellant argues the claims are eligible under Step 2A. See Request
8–29. Particularly, Appellant argues the claim limitations do not recite
abstract concepts because they “are integrated into the filing as a ‘practical
application.’” Request 9 (emphasis omitted). Appellant contends “[t]he
JUDICIAL EXCEPTIONS of ‘data gathering and ‘data entry’ are not recited
per se, and are ‘integrated’ into ‘additional elements’ of the ‘file and its
components,” making the claims “patent eligible under step 2A, prongs 1
and 2 of the 2019 Guidance.” Request 26, emphases omitted. Appellant
contends that these “ADDITIONAL ELEMENTS apply or use the judicial
exceptions” to “facilitate a ‘prophylaxis’ . . . for the breast, prostate[,] and
colorectal cancers,” making the claims “eligible under Step 2 A, prong 2.”
Request 26, emphasis omitted. See also Request 14–19.
Based on our review of the record, we are not persuaded of error in
the Decision with respect to Step 2A, Prongs One and Two. In Prong One
we “evaluate whether the claim recites a judicial exception, i.e., an abstract
idea, a law of nature, or a natural phenomenon.” Memorandum, 84 Fed.
Reg. at 54. In the Decision, we identified particular limitations of claim 13
corresponding to “steps taken by a health care practitioner while diagnosing
and treating a patient” as falling under the USPTO guidance as both
“[c]ertain methods of organizing human activity” and “mental processes.”
Decision 8.
Appellant argues that our Step 2A, Prong One analysis is incorrect
because the preamble of claim 13 recites a “tracking system” and step (m) of
claim 13 recites a “base substrate.” See Request 9–10. At best, these
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limitations may be considered the use of a computer, which does not show
we erred in determining the claim is directed to a judicial exception. See
Decision 9 (“the limitations elaborate on the manner in which the abstract
. . . [concepts] are to be performed,” and “even if any such [computer]
technology was required, we determine the claim is ineligible pursuant to the
Guidance.”); see also Final Act. 3; Versata Dev. Grp., Inc. 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.”). Further, as we noted in the Decision, the preamble of claim 13
explicitly refers to “said method carried out by means of manually operable
paper filings.” Decision 9. The use of a physical aid (pen and paper) to help
perform a mental step does not negate the mental nature that is explicitly
encompassed by the claim. See October 2019 Update: Subject Matter
Eligibility at 9, noticed at 84 Fed. Reg. 55942 (Oct. 18, 2019).
Step 2B
Appellant argues the claims are eligible under Step 2B of the USPTO
guidance. See, e.g., Request 14, 15. Particularly, Appellant argues that
“[t]he PROCESS STEPS of tracking” are “unlike any ‘file’ or ‘all files’” as
there are “at least 25 . . . unconventional inventive concepts.” Request 26;
see also Request 25. Appellant contends the “added elements of the
Inventor devised ‘file compilation section’ and the added new combination
of ‘process steps,’ amount to patentable inventive concepts.” Request 27
(emphasis omitted); see also Request 22 (regarding “the addition of the
inventor devised elements of the ‘file compilation section’ and the resulted
elements of new combination of process steps”). Appellant contends that
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the “constitution of the papers / page numbers of the file” confine “the claim
to a particular useful function” and fulfill “a long felt unresolved need.”
Request 27 (emphasis omitted). Similarly, Appellant contends that
“[r]elative to the prior art the file functions” confer a number of benefits,
such as “greater than expected results.” Request 27 (emphasis omitted).
We are not persuaded of error in the Decision with respect to Step 2B.
With respect to the currently pending claims, Appellant has failed to provide
sufficient evidence or reasoning to persuade us we misapprehended or
overlooked any points in determining the additional elements, individually
and as an ordered combination, do not provide more than well-understood,
routine, and conventional activities. See Decision 9, 10; Final Act. 9–11.

Additional Arguments
The Request includes arguments regarding case law and USPTO
practice outside the context of a patent eligibility analysis under Section 101.
See Request 13 (references to In re Ngai, 367 F.3d 1336 (Fed. Cir. 2004)
and MPEP § 2112.01), Request 23–24 (reference to MPEP § 716.02).
Appellant contends such materials confer patent eligibility because of
“fulfilling a long felt unresolved need” (Request 27, emphasis omitted), or
other “inventive concepts” regarding “35 USC 102 and 103.” Request 27,
emphasis omitted.
We are not persuaded of error in the Decision by these citations.
Appellant’s arguments that the claims are patent eligible because they are
otherwise novel and/or non-obvious are not persuasive. Although the
second step in the Alice framework is termed a search for an “inventive
concept,” the analysis is not an evaluation of novelty or non-obviousness.
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Alice, 573 U.S. at 217–18. A novel and non-obvious claim directed to a
purely abstract idea is, nonetheless, patent ineligible. See Mayo, 566 U.S. at
78–79. Further, “under the Mayo/Alice framework, a claim directed to a
newly discovered law of nature (or natural phenomenon or abstract idea)
cannot rely on the novelty of that discovery for the inventive concept
necessary for patent eligibility.” Genetic Techs. Ltd. v. Merial L.L.C., 818
F.3d 1369, 1376 (Fed. Cir. 2016).
Accordingly, we are not persuaded we overlooked or misapprehended
any points in our Decision.

DECISION
We do not grant Appellant’s request because the outcome with respect
to the claims is unchanged; however, we revise a citation appearing in our
Decision as discussed above.

Outcome of Decision on Rehearing:
Claims 35 U.S.C.
§
Reference(s)/Basis Denied Granted
13–20, 25,
26
101 Ineligible subject
matter
13–20, 25,
26

13–20, 25,
26
112(2) Indefinite 13–20, 25,
26

Overall
Outcome
13–20, 25,
26

Final Outcome of Appeal after Rehearing:
Claims 35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
13–20, 25,
26
101 Ineligible subject
matter
13–20, 25,
26

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9
13–20, 25,
26
112(2) Indefinite 13–20, 25,
26

Overall
Outcome
13–20, 25,
26

REHEARING DENIED