3M INNOVATIVE PROPERTIES COMPANYDownload PDFPatent Trials and Appeals BoardMay 18, 20212021000189 (P.T.A.B. May. 18, 2021) 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. 15/570,795 10/31/2017 Steven M. Austin 76487US005 8769 32692 7590 05/18/2021 3M INNOVATIVE PROPERTIES COMPANY PO BOX 33427 ST. PAUL, MN 55133-3427 EXAMINER REICHERT, RACHELLE LEIGH ART UNIT PAPER NUMBER 3686 NOTIFICATION DATE DELIVERY MODE 05/18/2021 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): LegalUSDocketing@mmm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte STEVEN M. AUSTIN, GARRI L. GARRISON, KHALOD S. KELANTAN, and JEREMY M. ZASOWSKI Appeal 2021-000189 Application 15/570,795 Technology Center 3600 Before ERIC S. FRAHM, BETH Z. SHAW, and JOYCE CRAIG, Administrative Patent Judges. SHAW, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision rejecting claims 1, 3–6, 8–11, 16–25, 29–36, and 44. See Final Act. 2. Claims 2, 7, 12–15, 26–28, and 37–43 have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies 3M Company, as the real party in interest. Appeal Br. 2. Appeal 2021-000189 Application 15/570,795 2 CLAIMED SUBJECT MATTER The invention, according to Appellant, generally relates to “systems and techniques for managing and updating medical information.” Spec. ¶ 3. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A computer-implemented method for managing medical information, the method comprising: receiving, by a computing device, current diagnostic information for a patient, the current diagnostic information including one or more current individual diagnoses for the patient comprising diagnostic codes; comparing, by the computing device, the current diagnostic information to prior diagnostic information for the patient, the prior diagnostic information including one or more prior individual diagnoses for the patient comprising diagnostic codes, wherein comparing comprises comparing the diagnostic codes of the one or more current individual diagnoses and the diagnostic codes of the one or more prior individual diagnoses; determining, by the computing device, one or more possible errors in the current diagnostic information based on the comparison by determining that the diagnostic codes of the one or more prior individual diagnoses is missing from the diagnostic codes of the one or more current individual diagnoses; detecting, by the computing device, co-morbidity information linking one or more current individual diagnosis and one or more prior individual diagnosis, a prior individual diagnosis does not correspond to a current individual diagnosis, the co-morbidity information describes coexisting chronic medical conditions for the patient; generating, by the computing device, an alert associated with each possible error of the one or more possible errors responsive to detecting the co-morbidity information; and transmitting each generated alert to a client computing device. Appeal Br. 24 (Claims App’x.). Appeal 2021-000189 Application 15/570,795 3 REJECTIONS Claims 1, 3–6, 8–11, 16–25, 29–36, and 44 stand rejected under 35 U.S.C. § 101. Final Act. 2. In the Answer, the Examiner withdrew the obviousness rejection under 35 U.S.C. § 103 of claims 1, 3–6, 8–11, 16–25, 29–36, and 44. Ans. 3. ANALYSIS Rejection of Claims 1, 3–6, 8–11, 16–25, 29–36, and 44 under 35 U.S.C. § 101 Appellant argues the Examiner’s rejection of claim 1 under 35 U.S.C. § 101 as directed to patent-ineligible subject matter is in error. Appellant argues claims 1, 3–6, 8–11, and 16–24 as a group. Appeal Br. 7. Given our discretion under 37 C.F.R. § 41.37(c)(1)(iv), we decide the § 101 rejection of claims 1, 3–6, 8–11, 16–25, 29–36, and 44 based on representative claim 1. Principles of Law An invention is patent-eligible if it claims a “new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101. However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014). In determining whether a claim falls within an excluded category, we are guided by the Court’s two-part framework, described in Mayo and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework, we first Appeal 2021-000189 Application 15/570,795 4 determine what concept the claim is “directed to.” See Alice, 573 U.S. at 219 (“On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept of hedging, or protecting against risk.”). Concepts determined to be abstract ideas, and thus patent ineligible, include certain methods of organizing human activity, such as fundamental economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191 (1981)); “tanning, dyeing, making waterproof cloth, vulcanizing India rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). If the claim is “directed to” an abstract idea, we turn to the second part of the Alice and Mayo framework, where “we must examine the elements of the claim to determine whether it contains an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted). “A claim that recites an abstract idea must include ‘additional features’ to ensure ‘that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo, 566 U.S. at 77). “[M]erely Appeal 2021-000189 Application 15/570,795 5 requir[ing] generic computer implementation[] fail[s] to transform that abstract idea into a patent-eligible invention.” Id. In January 2019, the U.S. Patent and Trademark Office (USPTO) published revised guidance on the application of § 101.2, 3 Under MPEP § 2106, we first look to whether the claim recites: (1) 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) (“Step 2A, Prong One”); and (2) additional elements that integrate the judicial exception into a practical application (“Step 2A, Prong Two”).4 MPEP § 2106.04(a) and § 2106.04(d). 2 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019 Revised Guidance”). In response to received public comments, the Office issued further guidance on October 17, 2019, clarifying the 2019 Revised Guidance. USPTO, October 2019 Update: Subject Matter Eligibility (the “October 2019 Update”). “All USPTO personnel are, as a matter of internal agency management, expected to follow the guidance.” 84 Fed. Reg. at 51; see also October 2019 Update at 1. 3 The Manual of Patent Examining Procedure (“MPEP”) now incorporates this revised guidance and subsequent updates at Section 2106 (9th ed. Rev. 10.2019, Rev. June 2020). All references to the MPEP are to the Ninth Edition, Revision 10.2019 (Last Revised June 2020), unless otherwise indicated. 4 “Examiners evaluate integration into a practical application by: (1) identifying whether there are any additional elements recited in the claim beyond the judicial exception(s); and (2) evaluating those additional elements individually and in combination to determine whether” the claim as a whole “integrates the exception into a practical application.” MPEP § 2106.04(d)(II). Appeal 2021-000189 Application 15/570,795 6 Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application,5 do we then look, under Step 2B, to whether the claim: (3) adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional activity” in the field; 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.6 MPEP § 2106.05(d). Step 1 Claim 1, as a method claim, falls within the process category of § 101. See 2019 Revised Guidance, 84 Fed. Reg. at 53–54 (citing MPEP § 2106.03, 2106.06). Step 2A(i): Does the Claim Recite a Judicial Exception? The Examiner determined that claim 1 recites a mental process, which is an abstract idea. See Final Act. 3. Appellant argues that the Examiner erred because “the human mind is not equipped to perform the claim limitations.” Appeal Br. 9. Furthermore, Appellant argues that “[t]he human mind would have to store perhaps thousands of codes and be aware of the 5 This corresponds to Alice part one where it is determined whether the claim is “directed to” an abstract idea. See Alice, 573 U.S. at 219. If a claim is “not directed to an abstract idea under part one of the Alice framework, we do not need to proceed to step two.” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016). 6 This corresponds to Alice part two where it is determined whether the claim contains an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-eligible application.” Alice, 573 U.S. at 221. Appeal 2021-000189 Application 15/570,795 7 co-morbidity information.” Id. Appellant also argues “the feature of receiving and comparing alone would be impractical to be performed in the human mind due to the potential volume of records.” Id. at 10. We are not persuaded of error. We agree with the Examiner that the claim limitations, “given the broadest reasonable interpretation, cover a mental process because it recites a process that is performed in the human mind, but for the recitation of generic computer components.” Final Act. 2– 3. The Examiner clearly identified elements of the claim that represent mental processes, including “comparing current diagnosis information to prior diagnostic information for a patient,” “determining one or more possible errors in the current information based on the comparison,” “detecting co-morbidity information linking the current individual diagnosis and one or more prior individual diagnosis,” and “generating and transmitting an alert with each possible error responsive to detecting co- morbidity information.” Final Act. 2–3. “Mental processes” include acts that people can perform in their mind or using pen and paper, even if the claim recites that a generic computer component performs the acts. See MPEP § 2106.04(a)(2)(III)(C); 84 Fed. Reg. at 52 n.14 (“If a claim, under its broadest reasonable interpretation, covers performance in the mind but for the recitation of generic computer components, then it is still in the mental processes category unless the claim cannot practically be performed in the mind.”); see also Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016) (“[W]ith the exception of generic computer-implemented steps, there is nothing in the claims themselves that foreclose them from being performed by a human, mentally or with pen and paper.”). Appellant provides Appeal 2021-000189 Application 15/570,795 8 insufficient objective evidence or persuasive argument to support its position that the identified limitations of claim 1 cannot be performed in the human mind or using pen and paper. Appellant argues that the Federal Circuit has routinely found that error correction is a type of technical problem that supports a finding of patent eligibility under 35 U.S.C. § 101. See e.g., Koninklijke KPN N.V. v. Gemalto M2M GmbH, 942 F.3d 1143, 1150 (Fed. Cir. 2019) (citing cases). Appellant further argues that “many cases in Koninklijke concluded the claims at issue in those respective cases are eligible under Step 2A, prong one because the error correction ‘made non-abstract improvements to existing technological processes and computer technology.’” Reply Br. 4. This invention is not analogous to that which the court held eligible in Koninklijke KPN N.V. v. Gemalto M2M GmbH, 942 F.3d 1143 (Fed. Cir. 2019). There, the recited device checked for data errors based on original data provided in blocks, where each block had bits in a particular ordered sequence. Gemalto, 942 F.3d at 1147–48. The recited device further included a varying device configured to, among other things, permute bit position relative to the particular ordered sequence for at least some bits in each block making up the original data without reordering any original data blocks. Id. In reaching its eligibility conclusion, the court noted that the claimed invention specifically recited how the permutation was used, namely by modifying the permutation applied to different data blocks, and this specific implementation was a key insight to enabling prior art error detection systems to catch previously undetectable systematic errors. Id. at 1153. The court then concluded that the claimed invention was not directed to an abstract idea because it sufficiently captured the specific asserted Appeal 2021-000189 Application 15/570,795 9 improvement in detecting systematic errors contributed by the inventors in that case. Id. That is not the case here. To the extent that Appellant contends that the claimed invention here is directed to such technical improvements and capabilities (see Reply Br. 4), we disagree. Because we agree with the Examiner that the claim recites an abstract idea, we proceed to Prong Two of Step 2A to determine if the idea is integrated into a practical application, in which case the claim as a whole is not “directed to” merely an abstract idea. Step 2A(ii): Judicial Exception Integrated into a Practical Application? We next determine whether the recited judicial exception is integrated into a practical application of that exception by: (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception(s); and (b) evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application. We use the term “additional elements” for claim features, limitations, or steps that the claim recites beyond the identified judicial exception. See Revised Guidance at 55 n.24. In claim 1, the additional elements include the “computing device,” “client computing device,” “receiving. . . current diagnostic information for a patient, the current diagnostic information including one or more current individual diagnoses for the patient comprising diagnostic codes,” and “transmitting each generated alert.” The computing device and client computing device encompass generic components. See Spec. Fig. 1, ¶¶ 37–39. Moreover, the “receiving” and “transmitting” steps are insignificant extra-solution activity. See, e.g., MPEP Appeal 2021-000189 Application 15/570,795 10 § 2106.05(g) (explaining that gathering data for use in a claimed process is an example of extra-solution activity); Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354-55 (Fed. Cir. 2016). Receiving information and transmitting a generated alert is considered insignificant extra-solution activity, given the high level of generality and context in the claimed invention. To integrate the exception into a practical application, the additional claim elements must, for example, improve the functioning of a computer or any other technology or technical field (see MPEP § 2106.05(a)), apply the judicial exception with a particular machine (see MPEP § 2106.05(b)), affect a transformation or reduction of a particular article to a different state or thing (see MPEP § 2106.05(c)), or apply or use the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment (see MPEP § 2106.05(e)). See 2019 Revised Guidance. Appellant argues that “like example 42 of the Guidelines, claims 1 is patent eligible because it ‘recites a combination of additional elements including storing information, providing remote access over a network, generating [an alert] whenever [an error is detected], and transmitting the [alert].’” Reply Br. 6. Appellant further argues that while the claims admittedly do not explicitly recite a storing step, the claims read in light of the Specification make storing information necessarily inherent because the claimed limitations cannot occur without the current and prior diagnostic information being stored in some fashion by the computing device. See Reply Br. 6. Appeal 2021-000189 Application 15/570,795 11 Example 42 (claim 1) recites a distributed network that allows remote users to access and update patient information in real time and different formats. The system converts and stores data in a standard format, and generates and transmits messages to users when updated data is stored. October 2019 Update, Examples, at 17–18. Remote users share information in real time in a standardized format regardless of the format user’s input patient information. Id. at 18–19. In contrast, the Specification here merely indicates that “[s]erver 22 may utilize commination interface 23 to communicate with . . . other storage devices such as additional repositories over a network or direct communication,” but does not further explain the formatting of the information, as in Example 42. Spec. ¶ 57; SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018) (“As many cases make clear, even if a process of collecting and analyzing information is ‘limited to particular content’ or a particular ‘source,’ that limitation does not make the collection and analysis other than abstract.”). Claim 1 as a whole merely uses instructions to implement the abstract idea on a computer or, alternatively, merely uses a computer as a tool to perform the abstract idea. Here, the additional limitation(s) do not integrate the judicial exception into a practical application. More particularly, the claims do not recite; (i) an improvement to the functionality of a computer or other technology or technical field; (ii) a “particular machine” to apply or use the judicial exception; (iii) a particular transformation of an article to a different thing or state; or (iv) any other meaningful limitation. See 84 Fed. Reg. at 55. Rather, claim 1 recites an abstract idea as identified in Step Appeal 2021-000189 Application 15/570,795 12 2A(i), supra, and none of the limitations integrate the judicial exception into a practical application. Therefore, because the abstract idea is not integrated into a practical application, we conclude that the claim is directed to the judicial exception. Step 2B — “Inventive Concept” or “Significantly More” If the claims are directed to a patent-ineligible concept, as we conclude above, we proceed to the “inventive concept” step. For Step 2B we must “look with more specificity at what the claim elements add, in order to determine ‘whether they identify an “inventive concept” in the application of the ineligible subject matter’ to which the claim is directed.” Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1258 (Fed. Cir. 2016) (quoting Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016)). We look to see whether there are any “additional features” in the claims that constitute an “inventive concept,” thereby rendering the claims eligible for patenting even if they are directed to an abstract idea. Alice, 573 U.S. at 221. Those “additional features” must be more than “well- understood, routine, conventional activity.” Mayo, 566 U.S. at 79. The Examiner determined that claim 1 does not include additional elements that are sufficient to amount to “significantly more” than the judicial exception because, the additional elements (i.e. the elements other than the abstract idea) amount to no more than limitations which amount to elements that have been recognized as well-understood, routine, and conventional activity in particular fields. See Final Act. 6; Spec.¶ 39. Appellant’s reliance on BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016) (Appeal Br. 12) is likewise unavailing. There, the court held eligible claims directed to a Appeal 2021-000189 Application 15/570,795 13 technology-based solution to filter Internet content that overcame existing problems with other Internet filtering systems by making a known filtering solution—namely a “one-size-fits-all” filter at an Internet Service Provider (“ISP”)—more dynamic and efficient via individualized filtering at the ISP. BASCOM, 827 F.3d at 1351. This customizable filtering solution improved the computer system’s performance and, therefore, was patent-eligible. See id. Unlike the filtering system improvements in BASCOM that added significantly more to the abstract idea in that case, the claimed invention here uses generic computing components to implement an abstract idea, as explained previously. Moreover, the claims do not result in a technical improvement, as a computer is merely used as a tool to implement the recited abstract idea, which does not rise to the level of significantly more. See, e.g., Spec. ¶¶ 37– 39; buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, (Fed. Cir. 2014); MPEP § 2106.05(d). Appellant does not direct our attention to anything in the Specification that indicates the computer components perform anything other than well- understood, routine, and conventional functions, such as receiving data, comparing data, detecting information, , and generating and transmitting an alert. See buySAFE, 765 F.3d at 1355 (“That a computer receives and sends the information over a network—with no further specification—is not even arguably inventive”); In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 614 (Fed. Cir. 2016) (server that receives data, extracts classification information from the received data, and stores the digital images is insufficient to add an inventive concept); Alice, 573 U.S. at 225–26 (receiving, storing, and sending information over networks is insufficient to Appeal 2021-000189 Application 15/570,795 14 add an inventive concept). Appellant’s arguments do not persuade us that claim 1 is “directed to” a patent-eligible concept. Accordingly, we sustain the Examiner’s § 101 rejection of representative claim 1, as well as claims 1, 3–6, 8–11, 16–25, 29–36, and 44, grouped therewith. DECISION We affirm the Examiner’s rejection of claims 1, 3–6, 8–11, 16–25, 29–36, and 44. DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed 1, 3–6, 8– 11, 16–25, 29–36, 44 101 Eligibility 1, 3–6, 8–11, 16–25, 29–36, 44 TIME PERIOD FOR RESPONSE 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). AFFIRMED Copy with citationCopy as parenthetical citation