Vijay K. Pillai

Patent Trials and Appeals Board

Mar 27, 2020

13530185 - (D) (P.T.A.B. Mar. 27, 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.
13/530,185 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

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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

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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

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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