Ex Parte Bockelman et al

Patent Trial and Appeal Board

Feb 19, 2019

13875570 (P.T.A.B. Feb. 19, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/875,570 05/02/2013 Scott Andrew Bockelman
51444 7590 02/21/2019
Kraguljac Law Group/Oracle
4700 Rockside Road
Summit One, Suite 510
Independence, OH 44131
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
ORA130523 (0-393) 9487
EXAMINER
KANAAN, MAROUN P
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
02/21/2019 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):
MPusti@KragLaw.com
PTOMail@KragLaw.com
DDay@KragLaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SCOTT ANDREW BOCKELMAN, JOHN CARON,
NARESH BALIGA, and LEYLA BADAKHSHANIAN
Appeal2017-009876
Application 13/875,570
Technology Center 3600
Before HUBERT C. LORIN, AMEE A. SHAH, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SHAH, Administrative Patent Judge.
DECISION ON APPEAL 1
The Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
final decision rejecting claims 1, 2, 4--10, and 12-20 under 35 U.S.C. § 101
as being directed to a judicial exception without significantly more. We
have jurisdiction under 35 U.S.C. § 6(b ). We REVERSE and enter a NEW
GROUND OF REJECTION pursuant to 37 C.F.R. § 41.50(b).
1 Throughout this decision, we refer to the Appellants' Reply Brief ("Reply
Br.," filed July 14, 2017), Appeal Brief ("Appeal Br.," filed Jan. 17, 2017),
and Specification ("Spec.," filed May 2, 2013), and to the Examiner's
Answer ("Ans.," mailed May 19, 2017), and Final Office Action ("Final
Act.," mailed Aug. 12, 2016).
2 According to the Appellants, the real party in interest is Oracle
International Corporation. Appeal Br. 2.
Appeal2017-009876
Application 13/875,570
STATEMENT OF THE CASE
The Appellants' invention "relates to clinical trial studies, and more
particularly, to modeling clinical trial studies that implement a cross-over
treatment design." Spec. ,r 1.
Claims 1, 10, and 16 are the independent claims on appeal. Claim 1
(Appeal Br. 20-21 (Claims App.)) is exemplary of the subject matter on
appeal and is reproduced below (with added bracketing for reference).
1. A method, performed by a computer that includes at
least a processor and a memory, the method comprising:
[(a)] generating, by the processor, a data model object
that is stored in the memory, wherein the data model object
comprising [sic]
[ ( a 1)] a treatment entity identifying a plurality of
treatments for a clinical trial study, wherein
[(alA)] each of the plurality of treatments is
based on a first subset of operational parameters;
[(a2)] a sequence entity identifying a plurality of
sequences for the clinical trial study, wherein
[(a2A)] each of the plurality of sequences is
based on a second subset of the operational
parameters, wherein
[ ( a2Ai)] the second subset comprises
a washout period parameter representing a
washout period associated with each of the
sequences,and
[(a2B)] each sequence of the plurality of
sequences comprises a combination of ones of the
plurality of treatments;
[ (b)] assigning, by the processor using the data model
object, a plurality of subject groups to each of the plurality of
sequences, wherein
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Application 13/875,570
[(bl)] one subject group of the plurality of subject
groups is respectively assigned to one sequence of the
plurality of sequences,
[(b2)] the one sequence is scheduled to be
administered to subjects of the one subject group during
the clinical trial study, and
[(b3)] the one sequence is determined, at least in
part, based on the washout period parameter associated
with the one sequence;
[ ( c)] generating in a data structure, by the processor, a
subject visit schedule for the plurality of sequences and the
assigned subject groups, wherein the subject visit schedule
indicates a plurality of subject visits scheduled for the one
subject group assigned to the one sequence; and
[ ( d)] transmitting, by the processor via network
communication, the data structure including the subject visit
schedule to a user interface to display the subject visit schedule
on a device to assist a user to schedule the plurality of
treatments according to the subject visit schedule.
ANALYSIS
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter, or any new and useful
improvement thereof, may obtain a patent therefor." 35 U.S.C. § 101. It is
undisputed that he subject matters of independent claims 1, 10, and 16 (and
the claims depending therefrom) fall within the "process," "manufacture,"
and "machine" statutory categories of patentable subject matter,
respectively.
However, the 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
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Application 13/875,570
U.S. 208,216 (2014). This case implicates the judicially-excepted category
of "abstract ideas."
In determining whether the claimed subject matter set forth in the
claims in this case falls within the judicially-excepted category of "abstract
ideas," we are guided by the Supreme Court's two-step 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 determine whether the claimed subject matter
is "directed to" an abstract idea. See Alice, 573 U.S. at 217 ("First, we
determine whether the claims at issue are directed to one of those patent-
ineligible concepts. We conclude that they are: These claims are drawn to
the abstract idea of intermediated settlement."). Claimed subject matter
directed to 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 (Gottschalkv. Benson, 409 U.S. 63, 69
(1972)) have been determined to be directed to abstract ideas and thereby
judicially-excepted from patent-eligibility.
If the claimed subject matter is "directed to" an abstract idea, we tum
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 (citation 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,
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Application 13/875,570
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.
Here, under the first step of the Alice/ Mayo framework, the Examiner
characterizes the claimed subject matter as being directed to "generating,
assigning, and transmitting information" and determines that that is an
"abstract idea." Final Act. 2. The Appellants do not dispute that
"generating, assigning, and transmitting information," per se, is an abstract
idea; rather, the Appellants dispute the Examiner's characterization of the
subject matter to which the claims are directed to. According to the
Appellants, the claimed subject matter is "directed to an improvement to an
existing technological process of computerized scheduling." Appeal Br. 11.
The Appellants contend the claimed subject matter is similar to that of
Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016), and direct
particular attention to recited claim limitations that call for "a data model
object" and "a data structure." See Appeal Br. 11; Reply Br. 3.
Although "claim construction is not an inviolable prerequisite" to an
analysis under § 101, "a full understanding of the basic character of the
claimed subject matter" is, nevertheless, needed to evaluate questions of
subject-matter eligibility. Bancorp Servs., LLC v. Sun Life Assur. Co. of
Canada (US.), 687 F.3d 1266, 1273-74 (Fed. Cir. 2012). See also McRO,
Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1311 (Fed. Cir. 2016)
("As an initial matter, we note that, in this case, claim construction is helpful
to resolve the question of patentability under § 101.")
In the present Appeal, the issues regarding patent-eligibility depend
on the interpretations of the claimed "data model object" and "data
structure." See Appeal Br. 11; Reply Br. 3--4; Final Act. 4; Ans. 3--4.
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Application 13/875,570
However, we are unable to ascertain an understanding of the scope of the
claimed "data model object" and "data structure." In particular, we are
unable to determine whether generating a "data model object" and/or
generating in a "data structure," as recited in the claims, imposes a
meaningful limit (i.e., "an improvement to an existing technological process
of computerized scheduling" ( Appeal Br. 11)) such that the claims are more
than a drafting effort designed to monopolize the common processing of a
type of information (i.e., "generating, assigning, and transmitting
information" (Final Act. 2)). Cf Interval Licensing LLC v. AOL, Inc., 896
F.3d 1335, 1346 (Fed. Cir. 2018):
Therefore, we do not assess the merits of the rejection under § 101.
Rather, for the reasons given below, and pursuant to our authority under
37 C.F.R. § 4I.50(b) to enter a new ground of rejection, we determine that
the claims are indefinite under 35 U.S.C. § 112, second paragraph.
Accordingly, the rejection under § 101 must fall, proforma, because it is
necessarily based upon speculative assumption as to the meaning of the
claims. See In re Steele, 305 F.2d 859, 862---63 (CCPA 1962) (addressing an
obviousness rejection). This determination does not reflect on the merits of
the underlying rejection based upon § 101.
NEW GROUND OF REJECTION UNDER 35 U.S.C. § 112
Claims 1, 2, 4--10, and 12-20 are rejected under pre-AIA 35 U.S.C.
§ 112, second paragraph.
The text ofpre-AIA 35 U.S.C. § 112, second paragraph, requires
"[ t ]he specification shall conclude with one or more claims particularly
pointing out and distinctly claiming the subject matter which the
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Application 13/875,570
[Appellants] regard[] as the invention." "As the statutory language of
'particular[ity ]' and 'distinct[ ness ]' indicates, claims are required to be cast
in clear- as opposed to ambiguous, vague, indefinite-terms." In re
Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014). Claims are in compliance
with 35 U.S.C. § 112(b)/second paragraph if "the claims, read in light of the
specification, reasonably apprise those skilled in the art both of the
utilization and scope of the invention, and if the language is as precise as the
subject matter permits." Hybritech Inc. v. Monoclonal Antibodies, Inc., 802
F.2d 1367, 1385 (Fed. Cir. 1986) (citing Shatterproof Glass Corp. v. Libbey-
Owens Ford Co., 758 F.2d 613, 624 (Fed. Cir. 1985)). Thus, the test for
determining the question of indefiniteness may be formulated as whether the
claims "set out and circumscribe a particular area with a reasonable degree
of precision and particularity." In re Moore, 439 F.2d 1232, 1235 (CCPA
1971).
Independent claims 1, 10, and 16 include the limitations of generating
a data model object and generating a schedule in a data structure, as recited
in limitations (a) and (c) of claim 1. Appeal Br. 20, 21, 24, 25, 28, 29
( Claims App.). The Appellants cite to the Specification at paragraphs 3, 41,
55, and 89--91 and Figures 1 lA and 1 lB as support for these limitations.
See id. at 3-8. These portions provide for generating treatments and
sequences (Spec. ,r 3), a data model representing a clinical trial study (id.
,r 41 ), generating a data model object from a data model (id.), "generating a
study (e.g., generating a data model object representing the study)" (id.
,r 89), a user input module generating "a data model object that represents
the study" (id. ,r 90, Fig. 1 lA), "generating a schedule ( e.g., a subject visit
schedule and/or a monitor visit schedule)" (id. ,r 89), and a schedule output
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Application 13/875,570
module generating a master subject visit schedule (id. ,r 91, Fig. 1 lB).
Figure 3 represents components of a data model. Id. ,r 41.
However, there is no discussion or specific definitions of what type of
structure comprises a "data model object" or "data structure" as the terms
are used in the claims, or how such an object or structure is generated. It is
not clear what structure the data model object comprises - whether the
structure is a specific type of data structure that improves on conventional
data structures (see Enfish, 822 F.3d at 1339) or is a conventional database.
We further do not see how in the Specification, including the claims,
technologically or by what steps, a "data model object" is generated and how
a schedule is generated in a "data structure." It is not clear whether the data
model object is generated by some type of technological process, in a way
"designed to improve the way a computer stores and retrieves data in
memory" (id. at 1338), or in a conventional manner whereby data are simply
stored therein. Similarly, it is not clear whether the data structure in which
the schedule is generated is specially designed or is a conventional database.
As such, the limitations are not clear as to what they entail, and we cannot
ascertain the scope of the invention.
Therefore, we enter a new ground of rejection of independent
claims 1, 10, and 16, along with dependent claims 2, 4--9, 12-15, and 17-20,
under 35 U.S.C. § 112, second paragraph, for failure to particularly point out
and distinctly claim the subject matter regarded as the invention.
DECISION
We REVERSE the Examiner's decision rejecting claims 1, 2, 4--10,
and 12-20, proforma.
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Application 13/875,570
We ENTER A NEW GROUND OF REJECTION for claims 1, 2,
4--10, and 12-20 under 35 U.S.C. § 112(b).
This Decision contains a new ground of rejection pursuant to
37 C.F.R. § 4I.50(b). 37 C.F.R. § 4I.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." 37 C.F.R. § 4I.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new Evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
Examiner, in which event the proceeding will be remanded to the
Examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same Record ....
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
REVERSED; 37 C.F.R. § 4I.50(b).
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