Ex Parte Corfield

Patent Trial and Appeal Board

Dec 11, 2018

13410971 (P.T.A.B. Dec. 11, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/410,971 03/02/2012 Charles Corfield
98783 7590 12/13/2018
Perkins Coie LLP - DEN General
P.O. Box 1247
Seattle, WA 98111-1247
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.
88999-8025.USOl 3247
EXAMINER
LE, LINH GIANG
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
12/13/2018 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):
patentprocurement@perkinscoie.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHARLES CORFIELD
Appeal2017-010205 1
Application 13/410,971 2
Technology Center 3600
Before JAMES B. ARPIN, J. JOHN LEE, and
JOSEPH P. LENTIVECH, Administrative Patent Judges.
ARPIN, Administrative Patent Judge.
I. DECISION ON APPEAL
Appellant appeals, under 35 U.S.C. § 134(a), the Examiner's decision
rejecting claims 1, 2, 6, 7, 10, 13, 15, and 17-19. App. Br. 2. Claims 3-5,
8, 9, 11, 12, 14, 16, and 20 are cancelled. Spec. 21-25. We have
jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 In this Decision, we refer to Appellant's Appeal Brief ("App. Br.," filed
April 1, 2016) and Reply Brief ("Reply Br.," filed December 9, 2016); the
Non-Final Office Action ("Non-Final Act.," mailed November 5, 2015); the
Examiner's Answer ("Ans.," mailed October 12, 2016); and the originally
filed Specification ("Spec.," filed March 2, 2012).
2 According to Appellant, the real party-in-interest is NVOQ, Inc. App.
Br. 2.
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II. STATEMENT OF THE CASE
Appellant explains that a networked computer system, such as those
recited in claim 18,
is configured to receive transcribed medical records related to a
patient medical encounter and compare the medical records to
databases containing approved invoice codes for medical
encounters. The networked computer system determines a
plurality of applicable codes that could be used for invoicing the
medical encounter and ranks the applicable codes based on an
accepted reimbursement value.
In certain embodiments, the technology of the present
application may relate to a networked computer system
configured to receive an audio file associated with the dictated
notes of a health care provider documenting the medical
encounter. The networked computer system would route the
audio file to a speech to text engine that would convert the audio
file to a textual file. The textual file optionally may be reviewed
for accuracy. The textual file may be returned in real or near real
time.
Spec. ,r,r 11, 12. Apparatus, such as those recited in claim 1, and methods,
such as those recited in claims 7 and 13, perform operations and steps
similar to those described with respect to the networked computer systems.
See id. ,r 3.
As noted above, claims 1, 2, 6, 7, 10, 13, 15, and 17-19 are pending.
Claims 1, 7, 13, and 18 are independent, and independent claims 7, 13, and
18 recite "a speech to text engine" or its use. See App. Br. 15-19 (Claims
App 'x ). Claims 2 and 6 depend directly from claim 1, claim 10 depends
directly from claim 7, claims 15 and 17 depend directly from claim 13, and
claim 19 depends directly from claim 18. Id.
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Claim 7, reproduced below, is illustrative.
7. A method of generating a patient health record using
at least one processor, the method comprising the steps of:
receiving audio describing a patient encounter of a health
care provider;
transcribing the audio using a speech to text engine to data
and inputting the data to an electronic health record;
recognizing from the data transcribed by the speech to text
engine at least one key data;
comparing the at least one key data to a database of
accepted medical codes;
identifying at least one accepted medical code for each of
the at least one key data;
replacing the at least one key data with each of the at least
one accepted medical code;
generating a modified electronic health record using the at
least one accepted medical code for each of the key data;
transmitting the modified electronic health record to the
health care provider;
selecting a medical code from the at least one accepted
medical codes;
determining a plurality of insurance codes based on the at
least one accepted medical codes;
calculating a reimbursement value for each of the plurality
of insurance codes;
ranking each of the insurance codes based on the
calculated reimbursement value;
equating the medical codes with the ranked insurance
codes such that the medical codes are displayed from highest
reimbursement value insurance code to lowest reimbursement
value insurance code;
displaying the equated medical codes; and
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receiving a selection of the displayed equated medical
codes by the healthcare provider.
Id. at 16-17 (Claims App'x).
III. THE REJECTION
Claims 1, 2, 6, 7, 10, 13, 15, and 17-19 stand rejected under
35 U.S.C. 101 because the recited apparatus, methods, and systems are
directed to a judicial exception (i.e., a law of nature, a natural phenomenon,
or an abstract idea) without significantly more. Ans. 2; see Non-Final
Act. 3. 3 Unless otherwise indicated, we adopt the Examiner's findings in the
Answer as our own and add any additional findings of fact appearing below
for emphasis. We address these rejections below.
IV. ANALYSIS
Under 35 U.S.C. § 101, a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." The U.S. Supreme Court has "long held
that this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable." Alice Corp. v.
CLS Bank Int 'l, 134 S. Ct. 2347, 2354 (2014) (quoting Ass 'nfor Molecular
Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013)). The
Court in Alice reiterated the two-step framework previously set forth in
Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct.
3 In light of the Office's issuance of new guidance regarding rejections under
35 U.S.C. § 101 after the mailing of the Non-Final Action, the Examiner
identified a new ground of rejection in the Answer and provides analysis of
the previous rejections under 35 U.S.C. § 101 consistent with that guidance.
Ans. 7; see App. Br. 8.
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1289, 1296-98 (2012), "for distinguishing patents that claim laws of nature,
natural phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts." Alice, 134 S. Ct. at 2355. The first step in
that analysis is to "determine whether the claims at issue are directed to one
of those patent-ineligible concepts," such as an abstract idea. Id.
The Court acknowledged in Mayo that "all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas." Mayo, 132 S. Ct. at 1293. We, therefore, look to whether
the claims focus on a specific method or means that improves the relevant
technology, or are directed instead to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery.
See Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir.
2016). If the claims are not directed to an abstract idea, the inquiry ends. Id.
at 1339; Ancora Techs., Inc. v. HTC America, Inc., 908 F.3d 1343, 1349
(Fed. Cir. 2018) ("It therefore passes muster under Alice step one, as it is not
directed to patent-ineligible subject matter. We need not and do not apply
step two of the Alice analysis."). Otherwise, the inquiry proceeds to the
second step in which the elements of the claims are considered "individually
and 'as an ordered combination' to determine whether the additional
elements 'transform the nature of the claim' into a patent-eligible
application." Alice, 134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct. at 1297,
1298). That is whether the claims recite elements making the claims
significantly more than the judicially excepted subject matter.
Having found that each of the pending claims is directed towards a
statutory category, the Examiner focused on the two-step Alice analysis.
Ans. 3; see Non-Final Act. 3.
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A. Alice Step One
With regard to the first step of the Alice analysis, the Examiner
determines that:
Independent claims 1, 7, 13 and 18 are directed to the abstract
idea of recognizing data in the electronic patient health
record and recognizing key data from that data; comparing
the key data to accepted medical codes and determine a plurality
of applicable accepted medical codes that corresponds to the key
data of the patient encounter; identifying a plurality of insurance
codes for each of the determined plurality of applicable accepted
medical codes; calculating a reimbursement value for the
plurality of insurance codes and ranking the calculated
reimbursement values.
Ans. 3; see Non-Final Act. 3.
Consistent with the Office's then-current guidance, the Examiner
notes the Federal Circuit previously found components of the abstract idea to
be themselves abstract. Ans. 3--4; cf Non-Final Act. 3--4. In particular, the
Examiner finds that:
Recognizing key data, comparing key data to accepted
medical codes to determine applicable medical codes and
identifying insurance codes corresponding to the determined
applicable medical codes as described in Applicant's claimed
invention is directed to an abstract idea as it is analogous to the
concept of comparing new and stored information and using
rules to identify options as was found to be abstract in
[SmartGene, Inc. v. Advanced Biological Labs., SA, 555 F.
App'x 950 (Fed. Cir. 2014) ("SmartGene")]. As described in
paras. [0033]- [0035] of the Specification key data is recognized
according to a rules database and then a database of insurance
codes is accessed to identify a plurality of insurance invoice
codes. Calculating a reimbursement value is organizing
information through mathematical correlations as was found to
be abstract in [Digitech Image Techs. v. Electronics for Imaging,
758 F.3d 1344 (Fed. Cir. 2014) ("Digitech")]. Specification
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para. [0030] teaches that the determination is accomplished using
a formula or a look up in a reimbursement database. Ranking the
reimbursement values is similar to using categories to organize,
store and transmit information, an abstract concept from
[Cyberfone Sys., LLC v. CNN Interactive Grp, Inc., 558 Fed.
App'x 988 (Fed. Cir. 2014) ("Cyberfone")]. 4
Ans. 3--4; see id. at 7; see also MPEP 2106.04(a)(2)(II)(D)(ii) ("collecting
information, analyzing it, and displaying certain results of the collection and
analysis, Electric Power Group, LLC v. Alstom, S.A., 830 F.3d 1350, 1351-
52 ... (Fed. Cir. 2016)"), (iv) ("organizing information through
mathematical correlations, [Digitech, 758 F.3d at 1349]").
Finally, the Examiner finds that "[u]sing categories to organize, store
and transmit information, comparing new and stored information using rules
to identify options, and organizing information through mathematical
correlations are all examples of an idea 'of itself that could be performed in
the human mind or by a human using a pen and paper." Ans. 4;
see CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1371-72
(Fed. Cir. 2011) (Finding method steps that can be performed in the human
mind or by a human using a pen and paper are patent ineligible mental
processes.); see also Bancorp Servs., LLC v. Sun Life Assurance Co. of Can.,
687 F.3d 1266, 1278 (Fed. Cir. 2012) ("[T]he fact that the required
calculations could be performed more efficiently via a computer does not
4 Appellant contends that, per the November 2016 Memorandum, the
Examiner should not have relied on non-precedential decisions such as
SmartGene and Cyberfone. Reply Br. 5. We note, however, that avoidance
of citations to non-precedential decisions is only suggested, and not
required, and SmartGene and other non-precedential decisions are cited with
approval in MPEP 2106 Rev. 08.2017, January 2018. All MPEP citations
herein are to MPEP Rev. 08.2017, January 2018.
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materially alter the patent eligibility of the claimed subject matter."). 5
Although the recited apparatus, methods, and systems use computer
technology to match words from the doctor-patient encounter to medical
codes, and to match the medical codes to insurance codes and then use the
insurance codes to determine reimbursements, this could be and was done by
a coder. See Spec. ,r 6. As the Manual of Patent Examining Procedure
indicates, analyzing information by the steps people go through in their
minds, without more, is essentially a mental process within the abstract-idea
category. MPEP 2106.04(a)(2)(III) (citing SmartGene, 555 F. App'x at
955).
Appellant disagrees and contends that the pending claims are not
impermissibly directed to an abstract idea. Quoting the Court in Alice,
Appellant notes, "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." App. Br. 9 (quoting Alice, 134 S. Ct. at 2354).
Appellant acknowledges that "[a]lthough the Answer appears to follow the
guidelines set forth in the May 2016 Memorandum, the Answer clearly relies
on identifying disparate abstract concepts allegedly recited in the claims and
grouping them together to conclude that the claimed invention as a whole is
directed to an abstract idea." Reply Br. 4. Appellant contends that "it is the
claiming of a monopoly upon such a fundamental truth, rather than a
novel application of one or more such truths which runs afoul of the first
5 Only claim 1 7, which depends from claim 13, recites that "the method is in
real or near real time." App. Br. 18 (Claims App'x). Thus, we interpret the
remaining claims as not requiring real time or near real time operation.
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part of the two-part analysis applied in Alice Corp. Pty." App. Br. 9. We
disagree and conclude that the Examiner identifies an abstract idea, to which
the claims are directed, and that, as discussed below with respect to
preemption, the claims need not "monopolize" an abstract idea in order to be
patent ineligible.
Appellant also contends that the pending claims "present functional
and palpable applications in the field of healthcare billing, but the claims
also recite specific ways for identifying and ranking medical codes by using
a specific set of elements recited by the claims." Id. (citing Research Corp.
Techs., Inc. v. Microsoft Corp., 627 F.3d 859, 868 (Fed. Cir. 2010)).
Nevertheless, the Examiner notes that, in Research Corporation
Technologies, the Federal Circuit "emphasized specific applications or
improvements to technologies. Appellant then states the claims present
functional and palpable applications in the field of healthcare billing but then
does not elaborate on what the functional and palpable applications are or
how there is an improvement to the technology." Ans. 8. Thus, the
Examiner finds that "the specific steps and the specific ways Appellant
points to are all directed to the abstract idea and not an application or
improvement to the technology. The use of technology to facilitate the
execution of the abstract idea as Appellant discusses (interaction of devices)
does not necessarily equate to a specific application or improvement to the
technology." Ans. 8 (emphases added). We agree with the Examiner.
We are not persuaded that the Examiner erred in identifying the
abstract idea to which the pending claims are directed.
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B. Alice Step Two
1. Independent claims 1, 7, 13, and 18
The Examiner further finds that the additional elements of the
independent claims, individually or as a whole, do not amount to
significantly more than the abstract idea. Ans. 4---6. In particular, the
Examiner finds that the elements include no more than generic computer
components performing generic computer functions. Id. at 4--5; see Spec.
,r,r 26 ("conventional computer," and "conventional basic input systems"),
27 ("The selection may be made using a conventional input device .... "),
30 ("[T]he recognized words may be stripped into a coding file or tagged in
some conventional manner."), 42 ("The system bus 506, which may follow
any conventional protocol ... , couples the various system components and
allows data and control signals to be exchanged between the components."),
44 ("A general purpose processor may be a microprocessor, but in the
alternative, the processor may be any conventional processor, controller,
microcontroller, or state machine."). The Specification also explains, as
noted above, that it is known that a "coder" may review a doctor's notes and
assign appropriate medical and insurance codes. Spec. ,r,r 6, 7. Moreover,
the Examiner finds that the additional steps or operations recited in the
independent claims, i.e., the "receiving," "replacing," and "displaying"
steps/operations, "do not amount to significantly more than the abstract idea
as these limitations are considered insignificant extra[-]solution activity as
they are data gathering and data outputting features." Ans. 5---6; see id. at 9;
see also MPEP 2106.05(g) ("The term 'extra-solution activity' can be
understood as activities incidental to the primary process or product that
are merely a nominal or tangential addition to the claim.").
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In addition, the Examiner finds that the use of "a speech to text
engine," as recited in independent claims 7, 13, and 18, "does not add
significantly more to the recited abstract idea as it is part of the data
gathering step and also the use of audio transcription was well-understood,
routine and conventional in the field of health care computer arts." Ans. 6.
As the Specification explains,
the interface 104 may be one or a combination of a number of
conventional basic input systems such as, for example, a
keyboard and display system, a light pen, touch screen,
microphone, or the like. Interface 104 also may have a display,
a speaker, a printer, or the like connected to allow information
to be provided back to the user, whether a doctor,
transcriptionist, or the like as is generally known in the art. The
workstation 102 ( which is described in more detail below) also
includes a processor 108. Processor 108 may interact with a
remote server 110 for certain applications and functionality. For
example, one remote server 110 may include a speech to text
engine 11 Ostt to convert audio data to textual data.
Spec. ,r 26 ( emphasis added); see id. ,r,r 23 ("[T]he technology of the present
application will be described generically and may be loaded onto a particular
user's workstation (fat or thick client) or hosted by a server that is accessed
by the workstation (thin client)." (emphasis added)), 44 (describing "general
purpose processors"). The Examiner finds that "the use of audio
transcription was well-understood, routine and conventional in the field of
health care computer arts." Ans. 6.
Appellant disagrees. App. Br. 12-13; Reply Br. 8. First, Appellant
contends that "the claims recite a variety of elements which are not well-
understood, routine, and conventional activities." App. Br. 13. In particular,
Appellant contends that, if they were "well-understood, routine, and
conventional activities," "the Examiner would have been able to easily
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provide support for such accusations." Id. Further, Appellant contends that
the systems and methods recited in independent claims "go beyond the
mere high level concepts and combine the steps in such a way to create a
particular machine satisfying the second part of the [Alice/Mayo] framework
put forth by the Supreme Court." Id.; see Reply Br. 8.
Nevertheless, as noted above, the Specification makes clear that,
individually, the additional hardware elements and steps and operations are
"well-understood, routine, and conventional activities." See Spec. ,r,r 26, 27,
30, 42, 44. Moreover, the Examiner finds that these hardware elements and
steps and operations add no more in combination than they add individually.
Ans. 9; see Non Final Act. 4--5. Appellant contends that
at least each of the independent claims recites a specific ordered
combination of features/steps/elements that results in an
improved process, system, or apparatus for billing by a
healthcare provider. As an example, in some embodiments, the
claimed invention provides a novel way to generate a patient
health record with optimized insurance coding to maximize
revenue for a healthcare provider.
Reply Br. 8. This contention, however, describes improvements to the
abstract idea and not an improvement to the computer technology. The
Examiner is not persuaded by Appellant's contentions to the contrary.
Ans. 9; see App. Br. 13. We agree with the Examiner.
2. Dependent claims 2, 6, 10, 15, 17, and 19
Claims 2, 6, 10, 15, 17, and 19 depend directly from one of
independent claims 1, 7, 13, or 18. Ans. 6-7. The Examiner finds that the
additional elements of these claims do not add significantly more to the
recited abstract idea, individually or as the ordered combination. In
particular, the Examiner finds the use of known interface devices (see Spec.
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,r 26 ("a number of conventional basic input systems such as, for example, a
keyboard and display system, a light pen, touch screen, microphone, or the
like")) in claim 10 is well-understood, routine, and conventional in the
computer arts. Ans. 6. The additional elements recited in the other
dependent claims, for example, the "Current Procedural Terminology
database, an International Statistical Classification of Diseases and Related
Health Problems database" (see id. ,r 6) recited in claim 2, also are known
generally and, whether considered alone or in combination with the elements
of the base claim from which they depend, do not amount to significantly
more than the abstract idea. Ans. 6-7.
We are not persuaded that the Examiner erred in finding that the
additional elements, considered alone or as a combination, do not amount to
significantly more than the identified abstract idea.
C. Lack of Complete Preemption
Appellant further contends that the pending claims do not completely
preempt the identified abstract idea. App. Br. 11-12. In particular,
Appellant contends that "[ m Jany different ways of identifying medical codes
and ranking the identified medical codes exist that are not implicated by the
current claims." Id. Thus, Appellant contends that the pending claims are
directed to patentable subject matter.
"[W]hile a preemptive claim may be ineligible, the absence of
complete preemption does not demonstrate that a claim is eligible."
Comm'r for Patents Memorandum, "Formulating a Subject Matter
Eligibility Rejection and Evaluating the Applicant's Response to a Subject
Matter Eligibility Rejection," 6-7 (May 4, 2016). "[E]mploying well-known
computer functions to execute an abstract idea, even when limiting the use
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of the idea to one particular environment, does not add significantly more,
similar to how limiting the computer implemented abstract idea in [Parker v.
Flook, 437 U.S. 584 (1978)] to petrochemical and oil-refining industries was
insufficient." Id. at 4--5. In response to Appellant's contention that the
pending claims do not completely preempt the abstract idea, the Examiner
notes that:
Regarding preemption the court said in [Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371 (Fed.
Cir. 2015)], while it may signal patent ineligible subject matter,
the absence of complete preemption does not demonstrate patent
eligibility. Where a patent's claims are deemed only to disclose
patent ineligible subject matter under the Mayo framework, as
the pending claims for appeal are, preemption concerns are fully
addressed and made moot.
Ans. 8; see MPEP 2106.07(b). We recognize that the U.S. Supreme Court
has described "the concern that drives this exclusionary principle [i.e., the
exclusion of abstract ideas from patent eligible subject matter] as one of
pre-emption." See Alice, 134 S. Ct. at 2354. However, characterizing
preemption as a driving concern for patent eligibility is not the same as
characterizing preemption as the sole test for patent eligibility. As our
reviewing court has explained, "[t]he Supreme Court has made clear that the
principle of preemption is the basis for the judicial exceptions to
patentability" and "[ fJor this reason, questions on preemption are inherent in
and resolved by the § 101 analysis." Ariosa, 788 F .3d at 1379 ( citing Alice
Corp., 134 S. Ct. at 2354). As the Examiner correctly notes, "although
preemption is one of the considerations, it is not alone dispositive of what is
an abstract idea." Ans. 4.
A potential lack of complete preemption is not dispositive here. Thus,
having considered preemption in the context of the two-step, Alice/Mayo
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analysis, the Examiner concludes that the pending claims neither are directed
to an improvement to the functioning of a computer or to any other
technology or technical field, nor do the additional elements in combination
or individually amount to patent eligible subject matter. Id. at 4, 8. We
agree.
We are not persuaded the Examiner erred in determining that the
claims are directed to an abstract idea and do not recite limitations
amounting to "significantly more" than the identified abstract idea.
Consequently, we are not persuaded that the Examiner erred in rejecting
claims 1, 2, 6, 7, 10, 13, 15, and 17-19, and we sustain the rejections
thereof.
V. DECISION
For the above reasons, we affirm the Examiner's decision rejecting
claims 1, 2, 6, 7, 10, 13, 15, and 17-19.
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).
AFFIRMED
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