Vijay K. PillaiDownload PDFPatent Trials and Appeals BoardMar 27, 202013530185 - (D) (P.T.A.B. Mar. 27, 2020) Copy Citation 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. 13/530,185 06/22/2012 Vijay K. PILLAI ORA120974 (O267) 2412 51444 7590 03/27/2020 Kraguljac Law Group/Oracle 4700 Rockside Road Summit One, Suite 510 Independence, OH 44131 EXAMINER LULTSCHIK, WILLIAM G ART UNIT PAPER NUMBER 3626 NOTIFICATION DATE DELIVERY MODE 03/27/2020 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): DDay@KragLaw.com MPusti@KragLaw.com PTOMail@KragLaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte VIJAY K. PILLAI Appeal 2018-005789 Application 13/530,185 Technology Center 3600 Before ALLEN R. MacDONALD, MICHAEL J. ENGLE, and IFTIKHAR AHMED, Administrative Patent Judges. ENGLE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 6–8 and 14–17, which are all of the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 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 Oracle International Corp. Appeal Br. 2. Appeal 2018-005789 Application 13/530,185 2 TECHNOLOGY The application relates to allowing healthcare institutions (e.g., hospitals) to safely share clinical data with life sciences companies (e.g., a company developing a new therapy) “while protecting the privacy of their patients and preserving the value of the information.” Spec. ¶ 13. ILLUSTRATIVE CLAIM Claim 6 is illustrative and reproduced below: 6. A non-transitory computer-readable medium storing computer-executable instructions that when executed by a processor of a computer cause the computer to: in response to receiving, from a provider device, electronic de-identified records, store the electronic de-identified records in a database, wherein each de-identified record comprises de- identified data describing characteristics of a subject without identifying the subject, wherein the de-identified records include a first level masking identifier for masking portions of the de- identified records; assign, by at least the processor, a second level masking identifier to the de-identified data and generate a mapping that maps the second level masking identifier to the first level masking identifier; receive, via an internet communication from a seeker device, a request to access the de-identified records; determine, by at least the processor, whether the provider device of the de-identified data authorizes the seeker device to access the de-identified records; in response to determining that the seeker device is authorized, receiving, from the seeker device, one or more selection criteria, and in response cause the processor to;[2] 2 Appellant and the Examiner may wish to correct this semicolon to a colon. Appeal 2018-005789 Application 13/530,185 3 access the database that stores the de-identified records; identify subjects having a de-identified record in the database that meets the one or more selection criteria; and return, to the seeker device, an internet communication that communicates a count of identified subjects; in response to receiving, via an internet communication from the seeker device, a masking identifier that identifies a subject and a request for information about the subject, causing at least the processor to: access the mapping of the second level masking identifiers to the first level masking identifiers to translate the masking identifier into a first level masking identifier that was assigned to the subject by the provider; and communicate, from the computer via an internet communication, the request and the first level masking identifier to the provider device without communicating the second level masking identifier to the provider device, wherein the first level masking identifier and the second level masking identifier cause no identifying information about the subject to be exchanged in the internet communication from the computer between the seeker device and the provider device. REJECTION ON APPEAL Claims 6–8 and 14–17 stand rejected under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter without significantly more. Final Act. 7.3 3 The rejections under 35 U.S.C. § 112, first and second paragraphs were withdrawn. See Appeal Br. 9; Advisory Act. 2 (Sept. 29, 2017). Appeal 2018-005789 Application 13/530,185 4 ANALYSIS In the Reply Brief, Appellant raises the then-new case of Berkheimer v. HP Inc., 881 F.3d 1360, 1363 (Fed. Cir. 2018) and the subsequent USPTO memorandum addressing Berkheimer. Reply Br. 2–3; Memorandum fr. Robert W. Bahr to Patent Examining Corps, “Changes in Examination Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.)” (Apr. 19, 2018) (“Berkheimer Memo”). In Berkheimer, the Federal Circuit held that “[w]hether something is well-understood, routine, and conventional to a skilled artisan at the time of the patent is a factual determination.” Berkheimer, 881 F.3d at 1369. In the Berkheimer Memo, the USPTO set forth several forms of evidence that could satisfy such a determination. E.g., Berkheimer Memo 3–4. Appellant argues the Examiner has not set forth such evidence here. Reply Br. 3–8. The USPTO subsequently also published revised guidance on the application of § 101 more generally. USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019 Guidance”). The 2019 Guidance itself was later updated. USPTO, October 2019 Update: Subject Matter Eligibility, available at https://www.uspto.gov/ sites/default/files/documents/peg_oct_2019_update.pdf (“Oct. Update”). Because the Berkheimer Memo, the 2019 Guidance, and the October Update were released after the Examiner’s Answer in this case, the Examiner has not yet had an opportunity in this case to consider § 101 in light of such revised procedures, including setting forth any factual bases for finding that the additional limitations beyond any recited abstract ideas were well-understood, routine, and conventional. Given the particular claims and facts of this case, we decline to make such factual determinations in the first Appeal 2018-005789 Application 13/530,185 5 instance absent findings from the Examiner and therefore reverse the current § 101 rejection. However, if appropriate, the Examiner is free to make a new § 101 rejection in light of the Berkheimer Memo, the 2019 Guidance, and the October Update. DECISION The following table summarizes the outcome of each rejection: Claims Rejected Statute Basis Affirmed Reversed 6–8, 14–17 § 101 Eligibility 6–8, 14–17 REVERSED Copy with citationCopy as parenthetical citation