Advance HealthDownload PDFPatent Trials and Appeals BoardJun 1, 202014144453 - (D) (P.T.A.B. Jun. 1, 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. 14/144,453 12/30/2013 Brian Wise 1166-003 1236 88360 7590 06/01/2020 Richards Patent Law P.C. 20 N Clark Street Suite 3300 Chicago, IL 60602 EXAMINER NAJARIAN, LENA ART UNIT PAPER NUMBER 3686 NOTIFICATION DATE DELIVERY MODE 06/01/2020 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): docketing@richardspatentlaw.com eofficeaction@appcoll.com robin@richardspatentlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte BRIAN WISE ____________ Appeal 2019-000578 Application 14/144,453 Technology Center 3600 ____________ Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and MATTHEW S. MEYERS, Administrative Patent Judges. CRAWFORD, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 seeks our review under 35 U.S.C. § 134 of the Examiner’s final rejection of claims 10–30. We have jurisdiction under 35 U.S.C. § 6(b). SUMMARY OF DECISION We AFFIRM. THE INVENTION Appellant claims a medical screening system. (Spec. ¶ 1, Title). Claim 10 is representative of the subject matter on appeal. 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 Advance Health. (Appeal Br. 3.) Appeal 2019-000578 Application 14/144,453 2 10. A method for performing an in-home medical assessment of a person, the method comprising the steps of: providing a medical screening intake device to a technician, the mobile device in communication with a server; receiving, by the medical screening intake device, objective medical data, subjective medical data, and medical test results for the person as input through the user interface by the technician, wherein the server stores the objective medical data, subjective medical data, and medical test results for two or more people; communicating, by the medical screening intake device, the objective medical data, subjective medical data, and medical test results to the server, assigning, by the server, an objective score to the person using the objective medical data, subjective medical data, and medical test results, wherein the objective score identifies the individual person's risk of future medical claims, assigning, by the server, a relative risk score for the person using the objective medical data, subjective medical data, and medical test results, wherein the relative risk score quantifies the relative risk of future medical claims for each person for whom objective medical data, subjective medical data, and medical test result is stored as compared to other people for whom objective medical data, subjective medical data, and medical test results is stored, automatically stratifying, by the server, the person into a risk class of two or more risk classes, wherein the risk classes are distinguished by the relative risk of future medical claims for people in each risk class, using the risk class, determining, by the server, whether to offer medical coverage to the person, and, when medical coverage is to be offered, determining a price tier; prompting, by the medical screening intake device, the technician to enter responses to a follow-up medical screening, receiving, by the medical screening intake device, the responses to the follow-up medical screening, automatically processing, by the server, the follow-up medical screening to generate one or more plans of care specifically adapted for the person based on the objective Appeal 2019-000578 Application 14/144,453 3 medical data, subjective medical data, medical test results, and the responses to the follow-up medical screening, and communicating, by the medical screening intake device, the one or more plans of care to the person as a report embodied in a structured data output. THE REJECTIONS Claims 10–30 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to non-statutory subject matter because the claimed invention is directed to a judicial exception. Claims 10–30 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention. Claims 10, 12–22, and 26–30 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Klingborg et al. (US 2012/0105443 A1; published May 3, 2012) in view of Nadeau et al. (US 2010/0004947 A1; published Jan. 7, 2010). Claim 11 is rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Klingborg in view of Nadeau and further in view of Kim et al. (US 2004/0083123 A1; published Apr. 29, 2004). Claims 23–25 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Klingborg et al. in view of Nadeau and further in view of Malik (US 2012/0270199 A1; published Oct. 25, 2012). Appeal 2019-000578 Application 14/144,453 4 ANALYSIS 35 U.S.C. § 101 REJECTION We will sustain the rejection of claims 10–30 under 35 U.S.C. § 101. The Supreme Court set forth a framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts. First, . . . determine whether the claims at issue are directed to one of those patent-ineligible concepts. . . . If so, . . . then ask, “[w]hat else is there in the claims before us?” . . . To answer that question, . . . consider the elements of each claim both individually and “as an ordered combination” to determine whether the additional elements “transform the nature of the claim” into a patent-eligible application. . . . [The Court] described step two of this analysis as a search for an “‘inventive concept’”—i.e., an element or combination of elements that is “sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.” Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 217–218 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72–73 (2012)) (citations omitted). To perform this test, we must first determine whether the claims at issue are directed to a patent-ineligible concept. The Federal Circuit has explained that “the ‘directed to’ inquiry applies a stage-one filter to claims, considered in light of the [S]pecification, based on whether ‘their character as a whole is directed to excluded subject matter.’” See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). It asks whether the Appeal 2019-000578 Application 14/144,453 5 focus of the claims is on a specific improvement in relevant technology or on a process that itself qualifies as an “abstract idea” for which computers are invoked merely as a tool. See id. at 1335–36. In so doing we apply a “directed to” two prong test: 1) evaluate whether the claim recites a judicial exception, and 2) if the claim recites a judicial exception, evaluate whether the judicial exception is integrated into a practical application. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 50–57 (Jan. 7, 2019) (Guidance”). In the briefing, Appellant refers to prior USPTO guidance regarding § 101. However, the earlier guidance including: (1) 2014 Interim Guidance on Patent Subject Matter Eligibility, 79 Fed. Reg. 74,618 (December 16, 2014); (2) July 2015 Update on Subject Matter Eligibility, 80 Fed. Reg. 45,429 (July 30, 2015) (“the 2015 Update”); (3) May 2016 Subject Matter Eligibility Update, 81 Fed. Reg. 27,381 (May 6, 2016); and (4) Memorandum on Subject Matter Eligibility Decisions dated Nov. 2, 2016 have been superseded by the 2019 Revised Guidance. See 2019 Revised Guidance, 84 Fed. Reg. at 52. As such, our analysis will not address the sufficiency of the Examiner's rejection against the cited prior guidance. Rather, our analysis will comport with the 2019 Revised Guidance as discussed below. The Examiner determines that the claims are directed to a fundamental economic practice and collecting information (receiving and objective medical data, subjective medical data and medical test results for a person), analyze it and displays results. (Non-Final Act. 4). The Examiner finds that the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the Appeal 2019-000578 Application 14/144,453 6 additional elements or combination of elements in the claims, other than the abstract idea per se, amount to no more than a recitation of a generic computer structure and functions that are well-understood, routine, and conventional activities previously known to the pertinent industry. (Non- Final Act. 5). The Specification discloses that the present subject matter relates generally to a medical screening system embodied in a mobile application. The system/method of the invention collects objective and subjective information for providing a quantified evaluation of the health status of customers of health insurance plans and accountable care organization and uses the data collected to automatically provide one and more recommended plans of care. (Spec. ¶ 1). The Specification explains that medical screening questionnaires are typically provided and completed in paper form, requiring the medical company representative to transport paperwork to the potential customer’s house, where both the representative and the potential customer complete the paperwork together. This paperwork, according to the Specification, can be burdensome and may be difficult to keep organized and the paper data presents a risk of loss and violation of federal HIPAA laws. (Spec. ¶ 3). In addition, because the data is collected manually, the data is not compiled and analyzed until well after the customer’s portion of the medical screening is complete so that it is difficult to provide helpful and relevant information to the potential customer at the time of the evaluation. (Spec. ¶ 4). To solve these problems, the system of the invention utilizes mobile devices to securely communicate with an associated database. The mobile device collects data during a medical screening and uploads the data to the database. (Spec. ¶ 8). Because the data is collected at the customer’s Appeal 2019-000578 Application 14/144,453 7 home, additional subject matter may be collected such as subjective information about the living conditions and/or surroundings of the customer. (Spec. ¶ 10). The data collected is analyzed by the computer to come up with a recommended plan of care. A medical insurance company can use a score to assess the risk of future medical claims from any customer, to provide a year-over-year comparative analysis of objective risk scores. (Spec. ¶¶ 12–13). The claims recite assessing a person’s risk of future medical insurance claims and thus relates to the fundamental economic practice related to insurance. A fundamental economic practice is a certain method of organizing human activities, which is a judicial exception. 2019 Revised Guidance, 84 Fed. Reg. 52. We thus agree with the Examiner’s findings that the claims are directed to the judicial exception of a fundamental economic practice. Also, we agree that the steps of claim 10 (receiving, communicating, stratifying etc.) constitute “analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, as essentially mental processes within the abstract-idea category.” Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016); see also buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (claims directed to certain arrangements involving contractual relations are directed to abstract ideas). Thus, we find that the claims recite the judicial exception of a method of organizing human activity and in the alternative a mental process. Turning to the second prong of the “directed to test,” claim 1 requires an “input/mobile device” and a “server.” The recitations of an input/mobile Appeal 2019-000578 Application 14/144,453 8 device and a server do not impose “a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.” 2019 Revised Guidance, 84 Fed. Reg. at 18. We find no indication in the Specification, nor does Appellant direct us to any indication, that the operations recited in independent claim 10 invoke any inventive programming, require any specialized computer hardware or other inventive computer components, i.e., a particular machine, or that the claimed invention is implemented using other than generic computer components to perform generic computer functions. See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[A]fter Alice, there can remain no doubt: recitation of generic computer limitations does not make an otherwise ineligible claim patent-eligible.”). We also find no indication in the Specification that the claimed invention effects a transformation or reduction of a particular article to a different state or thing. Nor do we find anything of record, short of attorney argument, that attributes any improvement in computer technology and/or functionality to the claimed invention or that otherwise indicates that the claimed invention integrates the abstract idea into a “practical application,” as that phrase is used in the revised Guidance. See Guidance, 84 Fed. Reg. at 55. In this regard, the recitation does not affect an improvement in the functioning of the input/mobile device or other technology, does not recite a particular machine or manufacture that is integral to the claim, and does not transform or reduce a particular article to a different state or thing. Id. Thus, claim 10 is directed to judicial exceptions that are not integrated into a practical application and thus is directed to “abstract ideas.” Appeal 2019-000578 Application 14/144,453 9 Turning to the second step of the Alice analysis, because we find that the claims are directed to abstract ideas the claims must include an “inventive concept” in order to be patent-eligible, i.e., there must be an element or combination of elements that is sufficient to ensure that the claim in practice amounts to significantly more than the abstract idea itself. See Alice, 573 U.S. at 217–18 (alteration in original) (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72–73 (2012)). The input/mobile device is disclosed as a mobile electronic device i.e., a computer. (Spec. ¶ 43). The introduction of a computer into the claims does not alter the analysis at Alice step two. [T]he mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention. Stating an abstract idea “while adding the words ‘apply it’” is not enough for patent eligibility. Nor is limiting the use of an abstract idea “‘to a particular technological environment.’” Stating an abstract idea while adding the words “apply it with a computer” simply combines those two steps, with the same deficient result. Thus, if a patent’s recitation of a computer amounts to a mere instruction to “implemen[t]” an abstract idea “on . . . a computer,” that addition cannot impart patent eligibility. This conclusion accords with the preemption concern that undergirds our § 101 jurisprudence. Given the ubiquity of computers, wholly generic computer implementation is not generally the sort of “additional featur[e]” that provides any “practical assurance that the process is more than a drafting effort designed to monopolize the [abstract idea] itself.” Alice, 573 U.S. at 223 (alterations in original) (citations omitted). Appeal 2019-000578 Application 14/144,453 10 Instead, “the relevant question is whether the claims here do more than simply instruct the practitioner to implement the abstract idea . . . on a generic computer.” Id. at 225. They do not. Taking the claim elements separately, the function performed by the intake/mobile device (computer) at each step of the process is purely conventional. Using a computer to retrieve, select, and apply decision criteria to data and modify the data as a result amounts to electronic data query and retrieval—one of the most basic functions of a computer. All of these computer functions are well-understood, routine, conventional activities previously known to the trading industry. See Elec. Power Grp., 830 F.3d at 1354; see also In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011) (“Absent a possible narrower construction of the terms ‘processing,’ ‘receiving,’ and ‘storing,’ . . . those functions can be achieved by any general purpose computer without special programming”). In short, each step does no more than require a generic computer to perform generic computer functions. As to the data operated upon, “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.” SAP Am. Inc. v. InvestPic, LLC, 890 F.3d 1016, 1022 (Fed. Cir. 2018). Considered as an ordered combination, the computer components of Appellant’s claims add nothing that is not already present when the steps are considered separately. The sequence of data reception-analysis- access/display is equally generic and conventional or otherwise held to be abstract. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (sequence of receiving, selecting, offering for exchange, display, Appeal 2019-000578 Application 14/144,453 11 allowing access, and receiving payment recited an abstraction), Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017) (holding that sequence of data retrieval, analysis, modification, generation, display, and transmission was abstract), Two-Way Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (holding sequence of processing, routing, controlling, and monitoring was abstract). The ordering of the steps is, therefore, ordinary and conventional. The claims do not, for example, purport to improve the functioning of the intake/mobile device. As we stated above, the claims do not affect an improvement in any other technology or technical field. The Specification spells out different generic equipment and parameters that might be applied using this concept and the particular steps such conventional processing would entail based on the concept of information access under different scenarios. (See, e.g., Spec. ¶ 43). Thus, the claims at issue amount to nothing significantly more than instructions to apply the abstract idea of information access using some unspecified, generic computer. Under our precedents, that is not enough to transform an abstract idea into a patent- eligible invention. See Alice, 573 U.S. at 226. We have reviewed all the arguments (Appeal Br. 6–13; Reply Br. 2– 7) Appellant has submitted concerning the patent eligibility of the claims before us that stand rejected under 35 U.S.C. § 101. We find that our analysis above substantially covers the substance of all the arguments, which have been made. But, for purposes of completeness, we will address various arguments in order to provide reviewable analysis of same. We do not agree with Appellant that the claims are patent eligible because, like the claims in BASCOM Global Internet Servs. v. AT&T Appeal 2019-000578 Application 14/144,453 12 Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016), the instant claims do not preempt all ways of tracking medical information and assigning risk. (Appeal Br. 8). While preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015); see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362-63 (Fed. Cir. 2015), cert, denied, 136 S. Ct. 701, 193 (2015) (“[T]hat the claims do not preempt all price optimization or may be limited to price optimization in the e-commerce setting do not make them any less abstract.”). And, “[w]here a patent's claims are deemed only to disclose patent ineligible subject matter under the Mayo framework, as they are in this case, preemption concerns are fully addressed and made moot.” Ariosa, 788 F.3d at 1379. We do not agree that the claimed interrelationship between relative risk, price tiers of medical coverage, and plans of care are limitations that create a unique environment that are necessarily significantly more than any abstract idea. (Appeal Br. 9). The determination of whether a claim recites significantly more is made in the second step of the Alice analysis and addresses whether the claim elements in addition to the abstract idea ensure that the claim in practice amounts to significantly more than the abstract idea itself. The claim element in addition to the abstract idea in claim 10 is the input/mobile device. As we discussed above, this device is disclosed as a generic device. In fact, the Specification indicates that this device may be any electronic device in communication with the server and may include a portable electronic device such as a tablet, smart phone or any other mobile communication device. The user interface is also described as generic and Appeal 2019-000578 Application 14/144,453 13 includes a touch screen, a keyboard, a microphone, camera or any other device used for data collection. (See, e.g., Spec. ¶ 43). We also agree with the Examiner that the functions performed are generic computer functions that serve to link the abstract ideas to a particular technological environment and a functions that are well-understood, routine and conventional. (Final Act. 5). Thus, the claims at issue amount to nothing significantly more than instructions to apply the abstract idea of information access using some unspecified, generic computer. We do not agree that the steps of collecting and processing medical data, assigning an objective score, assigning a relative risk score, stratifying the person into a risk class, determining a price tier and generating a plan amount to significantly more than the abstract idea of the fundamental economic practice of assessing a person risk of future medical insurance. The above-referenced steps of claim 10 are part of the abstract idea itself. While we agree that performing the above-referenced steps on a computer increases the efficiency of processing medical coverage plans for insurance providers as well as the efficiency of providing plans of care to patients, this increase in efficiency is generic, due to the fact that the claims are performed on a computer rather than manually. “[R]elying on a computer to perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible.” OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (citing Alice, 134 S. Ct. at 2359). In short, Appellant has not demonstrated how these cited disclosures reflect an improvement to computer capabilities or functionality. In view of the foregoing, we will sustain the Examiner’s rejection of claim 10. We will also sustain the rejection as it is directed to the remaining Appeal 2019-000578 Application 14/144,453 14 claims because Appellant has not argued the separate eligibility of those claims. REJECTION UNDER 35 U.S.C. §112, SECOND PARAGRAPH Appellant has not argued this rejection. (Appeal Br. 14). Therefore, we summarily affirm this rejection. REJECTION UNDER 35 U.S.C. §103(A) We will not sustain this rejection because we agree with Appellant that the prior art does not disclose “assigning, by the server, an objective score using the objective medical data, subjective medical data.” The Specification describes the subjective medical data as information that may include what the representative observes regarding the customer such as the customer’s house and surroundings. (Spec. ¶ 47). The Examiner relies on paragraphs 15–25 of Nadeau for teaching this subject matter. (Non-Final Act. 10–13). However, Nadeau discloses assigning a score based on objective evidence not subjective evidence. In view of the foregoing, we will not sustain the Examiner’s rejection of claim 10 and claims 12–22 and 26–30 dependent thereon. We will also not sustain the remaining rejections under 35 U.S.C. § 103(a) for the same reason. CONCLUSIONS OF LAW We conclude the Examiner did not err in rejecting claims 10–30 under 35 U.S.C. § 101. Appeal 2019-000578 Application 14/144,453 15 We conclude the Examiner did err in rejecting claims 10–30 under 35 U.S.C. §103(a). CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 10–30 101 Eligibility 10–30 10–30 112(b) Indefiniteness 10–30 10, 12–22, 26–30 103 Klingborg, Nadeau 10, 12–22, 26–30 11 103 Klingborg, Nadeau, Kim 11 23–25 103 Klingborg, Nadeau, Malik 23–25 Overall Outcome 10–30 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