Ex Parte Broder

Patent Trial and Appeal Board

Mar 22, 2018

12474611 (P.T.A.B. Mar. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/474,611 0512912009
24201 7590 03/26/2018
FULWIDER PATTON LLP
HOW ARD HUGHES CENTER
6100 CENTER DRIVE, SUITE 1200
LOS ANGELES, CA 90045
FIRST NAMED INVENTOR
Michael S. Broder
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.
PHAR-81968 1896
EXAMINER
NGUYEN, HIEP VAN
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
03/26/2018 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):
docketla@fulpat.com
eOfficeAction@fulpat.com
PTOL-90A (Rev. 04/07)
22UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL S. BRODER
Appeal2016-004162
Application 12/474,611
Technology Center 3600
Before MURRIEL E. CRAWFORD, MICHAEL C. ASTORINO, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner's
final decision rejecting claims 1-19. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b ).
We AFFIRM.
Appeal 2016-004162
Application 12/474,611
BACKGROUND
Appellant's invention is directed to a method of compiling and
analyzing the stored data in a graphical format that allows a user to quickly
make general and individual assessments of the results of the data. Spec. 1.
Claim 1 is illustrative:
1. A tool for evaluating a large amount of medical data pertaining
to numerous patients in a selected medical study, where a
treatment of each patient is displayed graphically, the tool
compnsmg:
a display medium for displaying a multi-axis graph, the
display medium including an orthogonal axis system with a first
axis corresponding to a treatment duration and a second axis
corresponding to a number of patients;
a single view graphical representation displayed on the
display medium comprising a series fo line segments aligned
with the time axis, each line segment corresponding to
respective ones of the patient's medical data with each patient's
medical data represented by a line segment;
the line segment having a length corresponding to a
period of time that the corresponding patient's medical data wa
obtained; and
the graphical representation depicting the medical data
via said line segments for every patient in the study.
Claims 1-19 are rejected under 35 U.S. C. § 101 because the claimed
invention is directed to a judicial expection (i.e., a law of nature, a natural
phenomenon, or an abstract idea) without significantly more.
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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. The
Supreme Court, however, has long interpreted § 101 to include implicit
exceptions: "[l]aws of nature, natural phenomena, and abstract ideas" are
not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 134 S. Ct.
2347, 2354 (2014).
In determining whether a claim falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court's two-
step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296-98
(2012)). In accordance with that framework, we first determine whether the
claim is "directed to" a patent-ineligible abstract idea. See Alice, 134 S. Ct.
at 2356 ("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."); Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4 in
petitioners' application explain the basic concept of hedging, or protecting
against risk."); Diamond v. Diehr, 450 U.S. 175, 184 (1981) ("Analyzing
respondents' claims according to the above statements from our cases, we
think that a physical and chemical process for molding precision synthetic
rubber products falls within the § 101 categories of possibly patentable
subject matter."); Parker v. Flook, 437 U.S. 584, 594--95 (1978)
("Respondent's application simply provides a new and presumably better
method for calculating alarm limit values."); Gottschalk v. Benson, 409 U.S.
63, 64 (1972) ("They claimed a method for converting binary-coded decimal
(BCD) numerals into pure binary numerals.").
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Application 12/474,611
The patent-ineligible end of the spectrum includes fundamental
economic practices, Alice, 134 S. Ct. at 2357; Bilski, 561 U.S. at 611;
mathematical formulas, Flook, 437 U.S. at 594--95; and basic tools of
scientific and technological work, Gottschalk, 409 U.S. at 69. On the patent-
eligible side of the spectrum are physical and chemical processes, such as
curing rubber, Diamond, 450 U.S. at 184 n.7, "tanning, dyeing, making
waterproof cloth, vulcanizing India rubber, smelting ores," and a process for
manufacturing flour, Gottschalk, 409 U.S. at 69.
If the claim is "directed to" a patent-ineligible abstract idea, we then
consider the elements of the claim-both individually and as an ordered
combination-to assess whether the additional elements transform the nature
of the claim into a patent-eligible application of the abstract idea. Alice, 134
S. Ct. at 2355. This is a search for an "inventive concept"-an element or
combination of elements sufficient to ensure that the claim amounts to
"significantly more" than the abstract idea itself. Id.
In addition, the Federal Circuit has held that if a method can be
performed by human thought alone, or by a human using pen and paper, it is
merely an abstract idea and is not patent-eligible under § 101. CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011) ("[A]
method that can be performed by human thought alone is merely an abstract
idea and is not patent-eligible under§ 101.).
ANALYSIS
The Examiner determined that the claims are directed to the abstract
idea of "collecting and storing medical data in a selected storage device,
perform statistical analysis on the stored medical data, displaying and
arranging patient's medical data on a single-view graph using line segments,
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Application 12/474,611
and evaluating the graph to determine patterns from among the patient
treatment data." Final. Act. 2. The Examiner found that the claims do not
include additional elements that are sufficient to amount to significantly
more than the judicial exception because the additional elements amount to
no more than generic computer structure that serves to perform generic
computer functions that serve the merely link the abstract idea to a particular
technological environment. Final. Act. 2-3.
Appellant argues that the Office Action does not include a
justification for arriving at the conclusion that the claimed subject matter is
an abstract idea. Specifically, the Appellant argues that there is no case law
to support the determination. App. Br. 5. We do not agree.
In our view claim 1 recites a tool for evaluating a large amount of data
including a medium for displaying data. The display includes a multi-axis
graph including an orthogonal axis system with first and second axes and a
single view graphical representation comprising a series of line segments.
We hold that the claim is directed to the display and analysis of data.
Claims involving data collection, analysis, and display are directed to an
abstract idea. Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353
(Fed. Cir. 2016) (holding that "collecting information, analyzing it, and
displaying certain results of the collection and analysis" are "a familiar class
of claims 'directed to' a patent ineligible concept"); see also 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 held non-abstract in prior cases, uses
generic computer technology to perform data analysis and display and does
not recite an improvernent to a particular computer technology. See, e.g.,
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McRO, Inc. v. Bandai Namco Games Am. 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 analyzing and displaying data.
We likewise, are not persuaded of error by the Appellant's argument
that the claims do not tie up all display of aggregate patient data. App. Br. 6.
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.), cert. denied, 136 S. Ct. 701 (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.
Appellant directs our attention to the declaration of Dr. Jenya
Antonova and states that the declaration is evidence that the invention is
directed to a new tool for analyzing medication data unrecognized in the
field. App. Br. 6.
We have reviewed the declaration of Dr. Antonova in which she avers
that the invention concisely depicts multiple layers of information such as
types of medication, duration and their use and patterns from one another
and that this depiction is a novel and unique way to summarize healthcare
data (para. 10). Appellant, by reliance on this declaration, is arguing that the
pending claims recite "significantly more" because the claimed invention is
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Application 12/474,611
"novel" and "non-obvious," but Appellant misapprehends the controlling
precedent. Although the second step in the Alice/Mayo framework is termed
a search for an "inventive concept," the analysis is not an evaluation of
novelty or non-obviousness, but rather, a search for "'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, 134 S. Ct. at 2355. A novel and non-obvious claim directed
to a purely abstract idea is, nonetheless, patent-ineligible. See Mayo, 132 S.
Ct. at 1304.
Appellant also argues that the graph that is depicted in Figure 4 is a
transformation of individual treatments of individual patients into a single
comprehensive tool for evaluating a treatment and therefore transforms
traditional data into a different thing. App. Br. 7. To the extent that
Appellant argues that the claims are patent-eligible because they satisfy the
transformation prong of the machine-or-transformation test set forth in
Bilski, we note that the alleged "transformation" is a manipulation of data,
which is not sufficient to meet the transformation prong under § 101. See
Gottschalk, 409 U.S. at 71-72 (holding that a computer-based algorithm that
merely transforms data from one form to another is not patent-eligible).
In view of the foregoing, we will sustain the Examiner's rejection of
claim 1. We will also sustain the Examiner's rejection of the remaining
claims because the Appellant has not argued the separate patent eligibility of
these claims.
DECISION
We affirm the Examiner's§ 101 rejection.
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TIME PERIOD
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) (2009).
ORDER
AFFIRMED
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