Alan Chmiel et al.

Patent Trials and Appeals Board

Feb 28, 2020

12857118 - (D) (P.T.A.B. Feb. 28, 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.
12/857,118 08/16/2010 Alan Chmiel ZIN-019240 US PRI 3413
26294 7590 02/28/2020
TAROLLI, SUNDHEIM, COVELL & TUMMINO L.L.P.
1300 EAST NINTH STREET, SUITE 1700
CLEVELAND, OH 44114
EXAMINER
PAULS, JOHN A
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
02/28/2020 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@tarolli.com
rkline@tarolli.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALAN CHMIEL, HEATHER GORNIK,
JOHN R. BARTHOLOMEW, CARLOS GRODSINSKY,
and JONATHAN SCHAFFER
Appeal 2018-003977
Application 12/857,118
Technology Center 3600
Before BIBHU R. MOHANTY, MEREDITH C. PETRAVICK, and
BRADLEY B. BAYAT, Administrative Patent Judges.
PETRAVICK, 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 to reject claims 1–5, 7–16, 18–25, and 27–32. We have
jurisdiction under 35 U.S.C. § 6(b).
This application was first before us in Appeal No. 2013-011068.
Appeal Br. 3.

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 ZIN
Technologies, Inc. and The Cleveland Clinic Foundation. Appeal Br. 3.
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Application 12/857,118

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We REVERSE.
CLAIMED SUBJECT MATTER
The claims are directed to a system for monitoring and managing
patient care. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A patient monitoring system comprising:
a patient unit configured as a server in a network to read
and write data in a remote database, the patient unit comprising:
a device interface configured to provide for data
communication with a measurement device, the patient
unit being programmed to selectively retrieve results data
indicative of at least one patient condition from the
measurement device;
a communication module configured to provide
two-way communication via the network with the remote
database, the server being configured to employ the
communication module to retrieve encounter instruction
data for the patient unit from the remote database for a
given patient encounter, the encounter instruction data
comprising a plurality of main sequence steps that include
at least one set of predetermined queries, at least one of the
plurality of main sequence steps being programmed to
trigger a conditional branch of sequence steps in response
to detecting an off-nominal condition at the at least one of
the plurality of sequence steps, the conditional branch of
sequence steps being programmed to obtain additional
information about the off-nominal condition and to return
to complete the plurality of main sequence steps, the
patient unit disabling the measurement device via the
device interface until the plurality of main sequence steps
and the conditional branch of sequence steps, as provided
by the encounter instruction data, are completed to prevent
a premature measurement of the at least one patient
condition and ensure compliance with a patient specific
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protocol, the patient unit providing a command via the
device interface to enable the measurement device to
measure the at least one patient condition after the
plurality of main sequence steps and the conditional
branch of sequence steps are completed, the server being
configured to employ the communication module to send
response data to the remote database for the given patient
encounter, the response data comprising stored user
responses, including the additional information about the
off-nominal condition, and the results data; and
a user interface programmed to present at least one
of the predetermined queries to a user and to receive user
responses to the each of the predetermined queries for the
given patient encounter, the user responses for each of the
predetermined queries being stored in memory of the
patient unit as the response data for the given encounter;
and
a back office system programmed to access the remote
database and to retrieve the response data from the remote
database for at least one patient unit, the back office system
further being programmed to at least one of add or modify the
encounter instruction data in response to retrieved response data
for the given encounter, the encounter instruction data being
stored in the remote database for a next patient encounter at the
patient unit.
REJECTION
Claims 1–5, 7–16, 18–25, and 27–32 are rejected under 35 U.S.C.
§ 101 for being directed to patent-ineligible subject matter.
OPINION
Principles of Law
A. Section 101
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
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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.
Alice, 573 U.S. 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 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 water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
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In Diehr, the claim at issue recited a mathematical formula, but the
Court held that “a claim drawn to subject matter otherwise statutory does not
become nonstatutory simply because it uses a mathematical formula.”
Diehr, 450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as
nothing more than a process for molding rubber products and not as an
attempt to patent a mathematical formula.”). Having said that, the Court
also indicated that a claim “seeking patent protection for that formula in the
abstract . . . is not accorded the protection of our patent laws, and this
principle cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment.” Id. (citing Benson and
Flook); see, e.g., id. at 187 (“It is now commonplace that an application of a
law of nature or mathematical formula to a known structure or process may
well be deserving of patent protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step 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 requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention.” Id.
B. USPTO Section 101 Guidance
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. 2019 Revised Patent
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Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“2019 Revised Guidance”).2 “All USPTO personnel are, as a matter of
internal agency management, expected to follow the guidance.” Id. at 51;
see also October 2019 Update at 1.
Under the 2019 Revised Guidance and the October 2019 Update, 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 (see MPEP §§ 2106.05(a)–(c), (e)–(h) (9th ed.
Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).3
2019 Revised Guidance, 84 Fed. Reg. at 52–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
Step 2B, to whether the claim:

2 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”) (available at
https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p
df).
3 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See 2019 Revised Guidance - Section III(A)(2), 84
Fed. Reg. 54–55.
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(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); 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.
2019 Revised Guidance, 84 Fed. Reg. at 52–56.
Discussion
The Examiner rejected claims 1–5, 7–16, 18–25, and 27–32 under 35
U.S.C. § 101 for being directed to patent-ineligible subject matter. See Final
Act. 2–13; Ans. 4–9. The Examiner determined that the claims recite the
abstract idea of “updating (i.e.[,] adding to or modifying) patient instructions
and/or dosage instructions for a next patient encounter based on patient
responses to queries, results of patient measurements and optionally
additional information collected as a result of an off-normal condition
obtained during a current encounter.” Final Act. 3–13 (emphasis omitted).
According to the Examiner, this concept is a mental process that can be
performed in the human mind or with pen and paper. Id. at 4.
Claims 1, 18, 23, and 29 are independent and, in addition the
limitation reciting the alleged abstract idea, each recite limitations
concerning the disabling and enabling of a measurement device. See Appeal
Br. 17–19, 28–30, 36–37, 41–42; see Final Act. 9. For example, claim 1
recites:
the patient unit disabling the measurement device via the device
interface until the plurality of main sequence steps and the
conditional branch of sequence steps, as provided by the
encounter instruction data, are completed to prevent a premature
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measurement of the at least one patient condition and ensure
compliance with a patient specific protocol, the patient unit
providing a command via the device interface to enable the
measurement device to measure the at least one patient condition
after the plurality of main sequence steps and the conditional
branch of sequence steps are completed.

Pointing to these limitations, Appellant argues that the independent claims as
a whole do not recite an abstract idea because they
provide[] a technical solution that ensures that a patient will not
take a premature measurement of a patient condition until all
conditions dictated by encounter instruction data are satisfied,
which ensures compliance with a patient specific protocol.
Specifically, the technical solution includes the controllability
(disabling and enabling) of one device over another unit to ensure
compliance with a protocol. This execution of encounter
instruction data by the patient unit and its control of the
measurement device via a device interface, in response to the
execution of the instruction data and responses it receives,
improves the operation of medical devices in a manner that
ultimately advances health care for patients.
Appeal Br. 22; see Reply Br. 2–4. In other words, Appellant argues that
these claim limitations reflect an improvement to technology that, with the
claim as a whole, integrates the allegedly recited judicial exception (i.e.,
abstract idea) into a practical application of the exception.
Under the 2019 Revised Guidance, even if the claims recite any one
of the groupings of abstract ideas, these claims are still not “directed to” a
judicial exception (abstract idea), and thus are patent eligible, if “the claim
as a whole integrates the recited judicial exception into a practical
application of that exception.” See 2019 Revised Guidance, 84 Fed. Reg. at
53. For example, limitations that are indicative of integration into a practical
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application include improvements to the functioning of a computer, or to
any other technology or technical field (see MPEP § 2106.05(a)). In
contrast, limitations that are not indicative of integration into a practical
application include:
(1) Adding the words “apply it” (or an equivalent) with the judicial
exception, or merely include instructions to implement an abstract
idea on a computer, or merely uses a computer as a tool to perform an
abstract idea (see MPEP § 2106.05(f));
(2) Adding insignificant extra-solution activity to the judicial
exception (see MPEP § 2106.05(g)); and
(3) Generally linking the use of the judicial exception to a particular
technological environment or field of use (see MPEP § 2106.05(h)).
See 2019 Revised Guidance, 84 Fed. Reg. at 54–55.
We agree with Appellant that the claim limitations concerning the
disabling and enabling of a measurement device, in combination with the
other claim limitations, considered as a whole, recites an improvement to
technology. As the Specification explains:
In this way, the patient unit 12 can use the communication
through the connection to selectively activate and deactivate the
measurement device to help ensure the user’s behavior complies
with the protocol[,]
and
[i]n this way, certain preliminary information can be collected
before the patient can perform testing. For instance, by
selectively disabling/enabling the patient device 14, there is a
reduced likelihood that [the] patient’s answer/response will be
influenced by an otherwise premature measurement that may be
acquired via the patient device.
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Spec. ¶¶ 60–61; see also Spec. ¶ 18 (“Systems and methods can be
programmed to help ensure and track patient compliance with a protocol that
is defined by the provider.”). The combination of the claim limitations
concerning the disabling and enabling of a measurement device with the
other claim limitations reflect an improvement to patient monitoring and
care technology. The additional limitations, in combination with the claim
as a whole, do more than merely recites the words “apply it” with the
judicial exception; add insignificant extra-solution activity to the judicial
exception; and generally link the use of the judicial exception to a particular
technological environment or field of use.
In response to Appellant’s argument, the Examiner argues, “[t]he
claimed invention does not improve the operation of either the patient unit or
the measurement device as Appellant contends” and that both the patient
unit and measurement device operate in accordance with their standard
functionality. Ans. 7. Under the 2019 Revised Guidance, limitations
that are indicative of integration into a practical application include
improvements to any other technology or technical field, not just
improvements to the functioning of a computer. See 2019 Revised
Guidance, 84 Fed. Reg. at 54–55; MPEP § 2106.05(a). The Examiner
provides no sufficient explanation as to why the claim limitations
concerning the disabling and enabling of a measurement device, in
combination with the other claim limitations, do not recite an improvement
to technology. Instead, the Examiner focuses on the conventionality and
argues, “[d]isabling a device until a user performs certain tasks is well-
established and conventional.” Ans. 5–7. Consideration of whether a
judicial exception has been integrated into a practical application
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“specifically excludes consideration of whether the additional elements
represent well-understood, routine conventional activity.” 2019 Revised
Guidance, 84 Fed. Reg. at 55.
On this record, we are persuaded that the Examiner erred in
determining that the claims are directed to an abstract idea. We do not
sustain the rejection of claims 1, 18, 23, and 29 and claims 2–5, 7–16, 19–
22, 24, 25, 27, 28, and 30–32, dependent thereon, under 35 U.S.C. § 101 for
being directed to patent-ineligible subject matter.
CONCLUSION
The Examiner’s rejection of claims 1–5, 7–16, 18–25, and 27–32 is
reversed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–5, 7–16,
18–25, 27–
32
101 Eligibility 1–5, 7–16,
18–25,
27–32

REVERSED