THESMAN, DEBRA

Patent Trials and Appeals Board

Apr 15, 2020

13712776 - (R) (P.T.A.B. Apr. 15, 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.
13/712,776 12/12/2012 DEBRA THESMAN MNDRL-001A 1893
7663 7590 04/15/2020
STETINA BRUNDA GARRED & BRUCKER
75 ENTERPRISE, SUITE 250
ALISO VIEJO, CA 92656
EXAMINER
MORGAN, ROBERT W
ART UNIT PAPER NUMBER
3626
MAIL DATE DELIVERY MODE
04/15/2020 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 DEBRA THESMAN1
Appeal 2018-004987
Application 13/712,776
Technology Center 3600
Before ADAM J. PYONIN, MICHAEL J. ENGLE, and
SCOTT RAEVSKY, Administrative Patent Judges.
RAEVSKY, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING

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 Quality
Standards, LLC. Appeal Br. 4.
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INTRODUCTION
Appellant filed a Request for Rehearing (“Req. Reh’g”) of the Patent
Trial and Appeal Board’s (“Board”) Decision mailed February 18, 2020
(“Decision”), in which we affirmed the rejection of claims 8–10 under
35 U.S.C. § 101.
ANALYSIS
Appellant contends,
[d]espite Appellant’s repeated emphasis on the
functionality of the claimed “fifth graphical user interface,”
namely that “the diagnostic code may be added or modified
based on a review of healthcare information, retrievable from
the central database, associated with the individual patient,” the
Decision of the Board appears to overlook these arguments and
this feature altogether.
Req. Reh’g 5. The limitation Appellant refers to is as follows:
wherein a fifth graphical user interface of the plurality of
graphical user interfaces displays diagnostic information for an
individual patient, as represented by a diagnostic code, wherein
the diagnostic code may be added or modified based on a
review of healthcare information, retrievable from the central
database, associated with the individual patient.
Appeal Br. 28 (Claims App’x). Appellant contends this limitation “is never
addressed specifically” and only appears as “part of the alleged mental
process limitation” (i.e., in our discussion of Step 2A, Prong 1). Req. Reh’g
5 (citing Decision 8–9). Appellant contends this limitation “is simply
lumped in with the rest of the graphical user interface features” and “appears
to be characterized merely as ‘displaying information.’” Id.
Appellant further contends that the Decision (at page 12, discussing
Step 2A, Prong 2) cuts off a quotation from page 19 of the Appeal Brief and
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therefore “overlooks the functional limitations of the ‘fifth graphical user
interface’ emphasized by Appellant, namely that ‘the diagnostic code may
be added or modified.’” Id. at 6. Appellant also asserts the Decision
“refutes a position not taken by Appellant, pointing out that ‘user interface
limitations are not per se patent eligible,’ before again broadly
characterizing the claimed user interfaces as merely outputting information.”
Id. at 6–7. Appellant also contends, “Notably absent is any discussion of the
functional limitations of the claimed ‘fifth user interface’ that were
emphasized by Appellant, namely that . . . ‘the diagnostic code may be
added or modified.’” Id. at 7.
Appellant does not persuade us that we misapprehended or
overlooked any points in our Decision. See 37 C.F.R. § 41.52(a)(1). The
Decision explicitly refers to the functional limitations of the fifth user
interface, namely, “displays diagnostic information for an individual patient,
as represented by a diagnostic code, wherein the diagnostic code may be
added or modified based on a review of healthcare information, retrievable
from the central database, associated with the individual patient,” and
explains that this limitation, together with several other limitations, “recite[s]
a mental process that can be performed in the human mind or using pen and
paper” under Step 2A, Prong 1. Decision 7–9. Analyzing this limitation
with the other mental process limitations, the Decision states,
these limitations encompass acts people can perform
using their minds or pen and paper because a user can mentally
or on paper store information, create a profile, provide a
hierarchy of access (e.g., permit some but not others to access
certain aspects), supply information enabling users to derive
information therefrom, and display the numerous forms of
claimed information.
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Id. at 9. We further determined that any additional limitations in the fifth
user interface beyond the abstract idea were not rooted in technology and did
not integrate the judicial exception into a practical application. Id. at 10–13.
Although we believe the above analysis fully addresses this limitation,
we nevertheless exercise our discretion to more specifically analyze this
limitation herein. The disputed limitation merely displays diagnostic
information for a patient, as represented by a diagnostic code, which may be
displayed on paper for example, and thus recites a mental process. See,
e.g., CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372–73
(Fed. Cir. 2011) (determining that a claim whose “steps can be performed in
the human mind, or by a human using a pen and paper” is directed to an
unpatentable mental process). That the “diagnostic code may be added or
modified based on a review of healthcare information . . . associated with the
individual patient” is unremarkable, as a clinician can change the diagnostic
code on the paper based on mentally reviewing healthcare information.
And, although the healthcare information may be “retrievable from the
central database,” this alone may not impart eligibility, as this generic
computer implementation of a mental process is insufficient to take the
invention out of the realm of abstract ideas. See 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.”); Alice, 573 U.S. at 223 (“Stating an abstract idea
while adding the words ‘apply it with a computer’” is insufficient to confer
eligibility.).
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Regardless of the asserted functional aspects of this limitation, as we
explained in our Decision, Appellant’s arguments in the original briefing and
on rehearing focus on a limitation that we determine is part of the judicial
exception under Step 2A, Prong 1 as discussed above, and thus, this
limitation is not an “additional element” that can impart patent eligibility to
the claim under Step 2A, Prong 2 or Step 2B. Decision 11–12 (citing
Appeal Br. 12–24; Revised Guidance, 84 Fed. Reg. at 55 n.24 (“USPTO
guidance uses the term ‘additional elements’ to refer to claim features,
limitations, and/or steps that are recited in the claim beyond the identified
judicial exception.”)). Specifically, even if it were true, as Appellant claims,
that “[n]otably absent is any discussion of the functional limitations of the
claimed ‘fifth user interface’ that were emphasized by Appellant, namely
that . . . ‘the diagnostic code may be added or modified’” (Req. Reh’g 7),
further analysis is unnecessary because a mental process limitation cannot
impart eligibility. See BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281,
1290 (Fed. Cir. 2018) (“It has been clear since Alice that a claimed
invention’s use of the ineligible concept to which it is directed cannot supply
the inventive concept that renders the invention ‘significantly more’ than
that ineligible concept.”).
In any event, the Decision did analyze whether the claimed user
interfaces (“first through eighth graphical user interfaces”), including the
fifth user interface, integrated the judicial exception into a practical
application and found that they do not. Decision 12–13 (“the claims do not
recite and the Specification does not describe an improvement in computers
or technology, but rather, merely outputting more information in different
interfaces”; “the claims are not focused on improving computers or
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technology, but on providing information to users in a way that helps them
access more information, and the tool for presentation is merely a generic
computer (or computers)”; “The asserted improvement here is the
presentation of information in conjunction with other information. Such an
information-based improvement is not an improvement ‘rooted in computer
technology.’”). Our Decision further “determine[d] no element or
combination of elements recited in claim 8 contains any ‘inventive concept’
or adds anything ‘significantly more’ to transform the abstract concept into a
patent-eligible application.” Id. at 14.
Accordingly, Appellant’s Request for Rehearing is denied.
CONCLUSION
Outcome of Decision on Rehearing
Claims 35 U.S.C. § Reference(s)/Basis Denied Granted
8–10 101 Eligibility 8–10

Final Outcome of Appeal after Rehearing:
Claims 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
8–10 101 Eligibility 8–10
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).
DENIED