Ex Parte Bravata et al

Patent Trial and Appeal Board

Jan 17, 2019

13225430 (P.T.A.B. Jan. 17, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/225,430 09/03/2011
758 7590 01/22/2019
FENWICK & WEST LLP
SILICON VALLEY CENTER
801 CALIFORNIA STREET
MOUNTAIN VIEW, CA 94041
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Dena Bravata
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.
29042-21688 1515
EXAMINER
DONLON, RY AND
ART UNIT PAPER NUMBER
3695
NOTIFICATION DATE DELIVERY MODE
01/22/2019 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):
PTOC@Fenwick.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DENA BRAVATA,
ANASTASIA TOLES,
MAEVE O'MEARA,
MATTHEW VANDERZEE,
RINA HORIUCHI,
and NA VEEN SAXENA
Appeal2017-002727 1
Application 13/225,4302
Technology Center 3600
Before HUBERT C. LORIN, ANTON W. PETTING, and
TARA L. HUTCHINGS, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
1 Our decision will make reference to the Appellants' Appeal Brief ("Br.,"
filed May 25, 2016) and published Specification ("Spec.," published Sept.
13, 2012), and the Examiner's Answer ("Ans.," mailed October 27, 2016),
and Final Action ("Final Act.," mailed November 23, 2015).
2 According to Appellants, the real party in interest is Castlight Health, Inc.
(Br. 1 ).
Appeal2017-002727
Application 13/225,430
STATEMENT OF THE CASE
Dena Bravata, Anastasia Toles, Maeve O'Meara, Matthew Vanderzee,
Rina Horiuchi, and Naveen Saxena (Appellants) seek review under
35 U.S.C. § 134 of a final rejection of claims 1, 3, 5-17, 21-23, and 43--49,
the only claims pending in the application on appeal. We have jurisdiction
over the appeal pursuant to 35 U.S.C. § 6(b ).
The Appellants invented a way of reference pricing3 of health care
deliverables. Specification ,r 2.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A computer-implemented method of determining
reference pricing of health care deliverables to be obtained by
users and to be paid for by a payer other than the users,
compnsmg:
[ 1] storing in a provider prices database negotiated rates
for a health care deliverable from each of a plurality of
health care providers,
each health care provider located at a geographic
location;
[2] receiving from a computing device of a payer a
maximum distance for a user to travel to obtain the health care
deliverable;
[3] determining
using the negotiated rates in the provider prices database,
3 Reference pricing: applying a fair cap (the reference price) to the amount
that payers of health care services will pay. Spec. ,r 4.
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the reference price for the health care deliverable to be
obtained by the user
as a function of the maximum distance and the negotiated
rates of health care providers having geographic locations
within the maximum distance,
wherein the reference price is a capped price the payer
will pay for the health care deliverable obtained by the user;
wherein the payer is not the user who obtains the health
care deliverable from the health care provider;
and
[ 4] storing the reference price in association with the
health care deliverable in a reference price database.
Claims 1, 3, 5-17, 21-23, and 43--49 stand rejected under
35 U.S.C. § 101 as directed to a judicial exception without significantly
more.
ISSUES
The issues of eligible subject matter tum primarily on whether the
claims recite more than abstract conceptual advice of what a computer is to
provide without implementation details.
ANALYSIS
STEP 11
Claim 1, as a method claim, recites one of the enumerated categories
of eligible subject matter in 35 U.S.C. § 101. The issue before us is whether
it is directed to a judicial exception without significantly more.
STEP 2
4 For continuity of analysis, we adopt the steps nomenclature from the
USPTO's 2019 Revised Patent Subject Matter Eligibility Guidance, 84 FR
50 (Jan. 7, 2019).
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Application 13/225,430
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, we
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 Intl, 573 U.S. 208, 217-18 (2014)
(citations omitted) (citing Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012)). To perform this test, we must first
determine what the claims are directed to. This begins by determining
whether the claims recite one of the judicial exceptions ( a law of nature, a
natural phenomenon, or an abstract idea). Then, if claims recite a judicial
exception, determining whether the claims at issue are directed to the recited
judicial exception, or whether the recited judicial exception is integrated into
a practical application of that exception. If the claims are directed to a
judicial exception, then finally determining whether the claims provide an
inventive concept because the additional elements recited in the claims
provide significantly more than the recited judicial exception.
STEP 2A Prong 1
Method claim 1 recites storing rate data, receiving distance data, and
determining and storing reference price data using the rate data and distance
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data. Thus, claim 1 recites receiving, analyzing, modifying, and storing
data. None of the limitations recite technological implementation details for
any of these steps, but instead recite only functional results to be achieved
by any and all possible means.
From this we see that claim 1 does not recite the judicial exceptions of
either natural phenomena or laws of nature. The next issue is whether it
recites the judicial exception of an abstract idea. To answer this, we next
determine whether it recites one of the concepts the Courts have held to be
lacking practical application, viz. mathematical concepts, 5 certain methods
of organizing human interactions, 6 including fundamental economic
practices and business activities, or mental processes. 7
The Examiner determines the claims to be directed to healthcare
deliverables which is a business for profit and a negotiated rate contract
which is a fundamental economic, and commercial practice. Final Act. 2-3.
The preamble to claim 1 recites that it is a method of determining
reference pricing of health care deliverables to be obtained by users and to
be paid for by a payer other than the users. The steps in claim 1 result in
5 See e.g., Gottschalkv. Benson, 409 U.S. 63, 71-72 (1972); Bilski v.
Kappas, 561 U.S. 593, 611 (2010); Mackay Radio & Telegraph Co. v. Radio
Corp. of Am., 306 U.S. 86, 94 (1939); SAP America, Inc. v. InvestPic, LLC,
898 F.3d 1161, 1163 (Fed. Cir. 2018)
6 See e.g., Bilski, 561 U.S. at 628; Alice, 573 U.S. at 219-20; Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed Cir. 2014); Smart Systems
Innovations, LLC v. Chicago Transit Authority, 873 F.3d 1364, 1383 (Fed.
Cir. 2017); In re Marco Guldenaar Holding B. V., 2018 WL 6816331 (Fed.
Cir. 2018)
7 See e.g., Benson, 409 U.S. at 67; CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1371-1372 (Fed. Cir. 2011); Intellectual Ventures I
LLCv. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016)
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determining and storing a reference price for healthcare deliverables absent
any technological mechanism other than a conventional computer for doing
so.
As to the specific limitations, limitations 1 and 2 recite insignificant
data gathering and limitation 4 recites insignificant post solution data
storage. Limitation 3 is the only step associated with performing what the
claim produces and recites getting to this pricing by conceptually advising
one to compute the price as a function of rate and distance data, which is
simply a mathematical computation. To advocate computing a price as a
function of rate and distance data is conceptual advice for results to be
obtained and not technological operations.
The Specification at paragraph 2 describes the invention as relating to
reference pricing of health care deliverables. Thus, all this intrinsic evidence
shows that claim 1 is directed to pricing healthcare deliverables, i.e., pricing.
This is consistent with the Examiner's determination.
The concept of pricing is a fundamental economic and business
practice long prevalent in our system of commerce. The use of pricing is
also a building block of ingenuity in valuing goods and services for sale.
Thus, pricing is an example of a conceptual idea subject to the Supreme
Court's "concern that patent law not inhibit further discovery by improperly
tying up the future use of these building blocks of human ingenuity." See
Alice, 573 U.S. at 216 (citations omitted).
Claim 1 recites the idea of performing various conceptual steps
generically resulting in the pricing. As we determined earlier, none of these
steps recite specific technological implementation details, but instead get to
this result by advising one to compute the price as a function of rate and
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distance data. Thus claim 1 is directed to pricing, which is a fundamental
economic and business practice.
This in tum is an example of sales activities as a certain method of
organizing human interactions because pricing is a mechanism for inducing
humans to coordinate in the marketplace for sales transactions.
The concept of pricing as advised to be done by computing the price
as a function of rate and distance data is a way of coordinating the efforts of
healthcare providers who set rates and operate at varying distances. The
steps recited in claim 1 are part of the healthcare provision system and
operate to set prices that are agreeable for effective performance by all
parties.
Our reviewing court has found claims to be directed to abstract ideas
when they recited similar subject matter. OIP Technologies, Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1362 (2015) (price optimization); Versata
Development Group, Inc. v. SAP America, Inc., 793 F.3d 1306, 1333-34
(2015) (price determination).
Alternately, this is an example of observation and evaluation as
mental processes because the steps of receiving, analyzing, modifying, and
storing data mimic human thought processes, perhaps with paper and pencil,
where the data interpretation is perceptible only in the human mind. See In
re TL! Commc'ns LLC Patent Litig., 823 F.3d 607,611 (Fed. Cir. 2016);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir.
2016). Claim 1, unlike the claims found non-abstract in prior cases, uses
generic computer technology to perform data reception, analysis,
modification, and storage and does not recite an improvement to a particular
computer technology. See, e.g., McRO, Inc. v. Bandai Namco Games Am.
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Inc., 837 F.3d 1299, 1314--15 (Fed. Cir. 2016) (finding claims not abstract
because they "focused on a specific asserted improvement in computer
animation"). As such, claim 1 is directed to the abstract idea of receiving,
analyzing, modifying, and storing data, and not a technological
implementation or application of that idea.
From this we conclude that at least to this degree, claim 1 is directed
to the abstract idea of pricing by advising one to compute the price as a
function of rate and distance data.
STEP 2A Prong 2
The next issue is whether claim 1 not only recites, but is more
precisely directed to this concept itself or whether it is instead directed to
some technological implementation or application of, or improvement to,
this concept i.e., integrated into a practical application. 8
At the same time, we tread carefully in construing this
exclusionary principle lest it swallow all of patent law. At
some level, "all inventions ... embody, use, reflect, rest upon, or
apply laws of nature, natural phenomena, or abstract ideas."
Thus, an invention is not rendered ineligible for patent simply
because it involves an abstract concept. "[ A Jpplication[ s ]" of
such concepts "'to a new and useful end,"' we have said,
remain eligible for patent protection. Accordingly, in applying
the § 101 exception, we must distinguish between patents that
claim the "'buildin[g] block[s]"' of human ingenuity and those
that integrate the building blocks into something more.
Alice, 573 U.S. at 217 (citations omitted).
The introduction of a computer into the claims does not alter the analysis at
Mayo step two.
8 See, e.g., Alice, 573 U.S. at 223, discussing Diamond v. Diehr, 450 U.S.
175 (1981).
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the 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 "implement[ 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
feature[ 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 223-24 ( citations omitted).
"[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea [] on a generic
computer." Alice, 573 U.S. at 225. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely functional, devoid of
implementation details. Steps 1 and 2 are pure data gathering steps.
Limitations describing the nature of the data do not alter this. Step 4 is
insignificant post solution activity of storing the results. Step 3 recites
generic computer processing expressed in functional terms to be performed
by any and all possible means and so presents no more than abstract
conceptual advice. All purported inventive aspects reside in how the data is
interpreted and the results desired, and not in how the process physically
enforces such a data interpretation or in how the processing technologically
achieves those results.
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Viewed as a whole, Appellants' method claim 1 simply recites the
concept of pricing as performed by a generic computer. To be sure, the
claims recite doing so by advising one to compute the price as a function of
rate and distance data. But this is no more than abstract conceptual advice
on the parameters for such pricing and the generic computer processes
necessary to process those parameters, and do not recite any particular
implementation.
Method claim 1 does not, for example, purport to improve the
functioning of the computer itself. Nor does it effect an improvement in any
other technology or technical field. The Specification spells out different
generic equipment9 and parameters that might be applied using this concept
and the particular steps such conventional processing would entail based on
the concept of pricing under different scenarios. But the Specification does
not describe any particular improvement in the manner a computer
functions. Instead, claim 1 amounts to nothing significantly more than an
instruction to apply the abstract idea of pricing by advising one to compute
the price as a function of rate and distance data 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 225-26.
None of the limitations reflect an improvement in the functioning of a
computer, or an improvement to other technology or technical field, applies
or uses a judicial exception to effect a particular treatment or prophylaxis for
a disease or medical condition, implements a judicial exception with, or uses
a judicial exception in conjunction with a particular machine or manufacture
9 The Specification describes a personal computer or a laptop. Spec. ,r 24.
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that is integral to the claim, effects a transformation or reduction of a
particular article to a different state or thing, or applies or uses the judicial
exception in some other meaningful way beyond generally linking the use of
the judicial exception to a particular technological environment, such that
the claim as a whole is more than a drafting effort designed to monopolize
the exception.
We conclude that claim 1 is directed to advising one to compute the
price as a function of rate and distance data to achieve the functional result
of pricing as distinguished from a technological improvement for achieving
or applying that result. The claim does not integrate the judicial exception
into a practical application.
STEP 2B
The next issue is whether claim 1 provides an inventive concept because
the additional elements recited in the claims provide significantly more than
the recited judicial exception. Taking the claim elements separately, the
function performed by the computer at each step of the process is purely
conventional. Using a computer for receiving, analyzing, modifying, and
storing data amounts to electronic data query and retrieval----one of the most
basic functions of a computer. All of these computer functions are generic,
routine, conventional computer activities that are performed only for their
conventional uses. See Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350,
1353 (Fed. Cir. 2016). Also see In re Katz Interactive Call Processing
Patent Litigation, 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"). None of these activities are used in some
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unconventional manner nor do any produce some unexpected result.
Appellants do not contend they invented any of these activities. 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 America, Inc. v. InvestPic LLC, 898 F.3d 1161,
1168 (Fed. Cir. 2018).
Considered as an ordered combination, the computer components of
Appellants' method claims add nothing that is not already present when the
steps are considered separately. The sequence of data reception-analysis-
modification-storage 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,
allowing access, and receiving payment recited an abstraction), Inventor
Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir.
2017) (sequence of data retrieval, analysis, modification, generation, display,
and transmission), Two-Way Media Ltd. v. Comcast Cable Communications,
LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (sequence of processing, routing,
controlling, and monitoring). The ordering of the steps is therefore ordinary
and conventional. 10
10 The programming is described in functional terms "embodying a program
of instructions that when executed by the machine cause the machine to
perform a method of providing a payer with a platform for reference pricing
of health care deliverables." Spec. ,r 74.
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We conclude that the claim 1 does not provide an inventive concept
because the additional elements recited in the claim do not provide
significantly more than the recited judicial exception.
REMAINING CLAIMS
The remaining method claims merely describe process parameters.
We conclude that the method claims at issue are directed to a patent-
ineligible concept itself, and not to the practical application of that concept.
As to the structural claim, it
[is] no different from the method claims in substance.
The method claims recite the abstract idea implemented on a
generic computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long "warn[ ed] ... against" interpreting § 101 "in
ways that make patent eligibility 'depend simply on the
draftsman's art.'
Alice, 573 U.S. at 226. As a corollary, the claim is not directed to any
particular machine.
LEGAL CONCLUSION
From these determinations we further determine that the claims do not
recite an improvement to the functioning of the computer itself or to any
other technology or technical field, a particular machine, a particular
transformation, or other meaningful limitations. From this we conclude the
claims are directed to a judicial exception, that of the abstract idea of pricing
as a certain method of organizing human behavior and/or a mental process,
without significantly more.
APPELLANTS' ARGUMENTS
As to Appellants' Appeal Brief arguments, we adopt the Examiner's
determinations and analysis from Final Action 2-5 and Answer 2-5 and
reach similar legal conclusions. In particular, we are not persuaded by
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Appellants' argument that the claims are not directed to something
fundamental. Br. 8-16. As we determine supra, the claims re directed to
pricing. The history of pricing for goods and services transactions is too
long and notorious to seriously argue it is not fundamental. Although
Appellants argue that the claims are directed to pricing using the remaining
limitations in the claims, these limitations only recite the parameters used
and mathematical operations applied to compute the price, and do not go to
any particular technological implementation or application of the recited
pncmg.
The patent in this case is not directed to the solution of a
"technological problem," nor is it directed to an improvement
in computer or network functionality. Instead, it claims the
general concept of out-of-region delivery of broadcast content
through the use of conventional devices, without offering any
technological means of effecting that concept.
Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1262 (Fed.
Cir. 2016).
CONCLUSIONS OF LAW
The rejection of claims 1, 3, 5-17, 21-23, and 43--49 under 35 U.S.C.
§ 101 as directed to a judicial exception without significantly more is proper.
DECISION
The rejection of claims 1, 3, 5-17, 21-23, and 43--49 is affirmed.
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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)(l)(iv) (2011).
AFFIRMED
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