Ex Parte DEBGUPTA et al

Patent Trial and Appeal Board

Aug 30, 2018

13015176 (P.T.A.B. Aug. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/015, 176 01/27/2011
6449 7590 09/04/2018
ROTHWELL, FIGG, ERNST & MANBECK, P.C.
607 14th Street, N.W.
SUITE 800
WASHINGTON, DC 20005
Shub DEBGUPTA
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.
4274-102 2130
EXAMINER
RAPILLO, KRISTINE K
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
09/04/2018 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):
PTO-PAT-Email@rfem.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHUB DEBGUPTA and PRA VEEN MOOGANUR
Appeal2016-006755
Application 13/015,176
Technology Center 3600
Before LARRY J. HUME, JUSTIN BUSCH, and JOYCE CRAIG,
Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
Non-Final Rejection of claims 1-20 and 22-24, which constitute all of the
claims pending in this application. 2 We have jurisdiction under 35 U.S.C.
§ 6(b ).
We affirm.
1 According to Appellants, the real party in interest is WiserTogether, Inc.
App. Br. 1.
2 Claim 21 has been canceled. App. Br. 31 (Claim App'x).
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Application 13/015,176
INVENTION
Appellants' claimed invention relates to a support platform and
method that enables an individual to make a health care decision. Abstract.
Claim 1 is illustrative and reads as follows:
1. A method for providing healthcare information to a user
to enable the user to make a healthcare decision, the method
compnsmg:
receiving, via a network, authentication information
identifying the user as a customer of healthcare services
associated with a particular entity;
associating the user with the particular entity if the
received authentication information corresponds to stored
authentication information associating the user with the
particular entity;
receiving from the user, via the network, information
identifying a healthcare issue; and
generating a user interface to be displayed to the user, via
the network, wherein the user interface comprises comparison
information regarding the healthcare issue to enable the user to
make a decision regarding selecting a treatment option from a
plurality of treatment options for treating the healthcare issue;
wherein the comparison information comprises
information for each of the plurality of treatment options
gathered from a plurality of individuals that used at least one of
the plurality of treatment options in treating the healthcare issue
such that the comparison information enables the user to
compare the plurality of treatment options; and
wherein at least one of the plurality of treatment options is
provided via healthcare services provided by the entity, and
wherein the user interface further comprises information
regarding the healthcare services provided to the user by the
entity.
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REJECTIONS
Claims 1-20 and 22-24 stand rejected under 35 U.S.C. § 101 because
the claimed invention is directed to a judicial exception to patentability
without significantly more. Non-Final Act. 2.
Claims 1-3, 5-15, 17-20, and 22-24 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Soto et al. (US 8,311,849
B2; issued Nov. 13, 2012) ("Soto") and Schoenberg (US 7,865,377 B2;
issued Jan. 4, 2011). Non-Final Act. 3-9.
Claims 4 and 16 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Soto, Schoenberg, and Myrle
Croasdale, Able to Practice: Physicians with Disabilities Do What It Takes
to Thrive, Amednews.com (Jan. 17, 2005) ("Croasdale"). Non-Final Act. 9-
10.
ANALYSIS
We have reviewed the rejections of claims 1-20 and 22-24 in light of
Appellants' arguments that the Examiner erred. We have considered in this
Decision only those arguments Appellants actually raised in the Briefs. Any
other arguments Appellants could have made, but chose not to make, in the
Briefs are deemed waived. See 37 C.F.R. § 4I.37(c)(l)(iv).
Appellants' arguments are not persuasive of error. We agree with and
adopt as our own the Examiner's findings of facts and conclusions as set
forth in the Answer (Ans. 2-7) and in the Action from which this appeal was
taken (Non-Final Act. 2-12). We provide the following explanation for
emphasis.
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Rejection of Claims 1-20 and 22-24 under 35 USC§ 101
Under 35 U.S.C. § 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. The Supreme Court, however, has long interpreted§ 101
to include an implicit exception: "[l]aws of nature, natural phenomena, and
abstract ideas" are not patentable. See, e.g., Alice Corp. Pty. Ltd. v. CLS
Bankint'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. Alice, 134 S. Ct. at 2355
(citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66,
76-77 (2012)). In accordance with that framework, we first determine
whether the claim is "directed to" a patent-ineligible abstract idea. See
Alice, at 2356.
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,
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. (internal quotations and
citation omitted). 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, 566 U.S. at 71. We, therefore, look to
whether the claims focus on a specific means or method that improves the
relevant technology or are instead directed to a result or effect that itself is
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the abstract idea and merely invoke generic processes and machinery. See
Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
Appellants contend the Examiner erred in rejecting the pending claims
as patent ineligible because "the rejection is completely devoid of any
statutory or caselaw basis for the unsupported opinion expressed." App.
Br. 4. Appellants contend the Examiner's omission is "clear error" and
"denies the Applicants the opportunity to make an informed response." Id.
at 5.
We disagree. The Examiner satisfies the burden of establishing a
prima facie case under 35 U.S.C. § 132 by setting forth a rejection in a
sufficiently articulate and informative manner. In re Jung, 637 F.3d 1356,
1363 (Fed. Cir. 2011). If the Examiner "adequately explain[s] the
shortcomings ... the burden shifts to the applicant to rebut the prima facie
case with evidence and/or argument." Hyatt v. Dudas, 492 F.3d 1365, 1370
(Fed. Cir. 2007). The Non-Final Office Action adequately explains the
§ 101 rejection. See Non-Final Act. 2. The Examiner's statements satisfy
§ 132(a) because they apply the Mayo/Alice analytical framework and
apprise Appellants of the reasons for the§ 101 rejection under that
framework. Appellants have not responded by alleging a failure to
understand the rejection. To the contrary, Appellants clearly identify the
abstract idea. See, e.g., App. Br. 5.
In the first step of the analysis set forth in Alice, the Examiner
concluded claims 1-20 and 22-24 are directed to the abstract idea of
comparing new and stored information and using rules to identify options.
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Non-Final Act. 2. We agree with the Examiner that claim 13 is directed to a
series of steps related to data, i.e., receiving data, associating a user with
data, and generating a user interface to display data. Ans. 2. We also agree
the recited steps are similar to the concept of comparing new and stored
information and using rules to identify options, which is an abstract idea.
Id.; see SmartGene Inc. v. Adv. Bio. Labs. SA, 555 F. App'x 950 (Fed. Cir.
2014) (nonprecedential).
In SmartGene, the Federal Circuit concluded claims were patent
ineligible because they did "no more than call on a 'computing device,' with
basic functionality for comparing stored and input data and rules, to do what
doctors do routinely." SmartGene, 555 F. App'x at 954. In the instant case,
the recited "authentication information," "information identifying a
healthcare issue" and "comparison information" are nothing more than data
used in an algorithm process that uses a network to display data using
mathematical comparisons and rule-based processes. The claims at issue in
SmartGene relied upon "'expert rules for evaluating and selecting' from a
stored 'plurality of different therapeutic treatment regimens."' SmartGene,
at 955. The "expert rules" in SmartGene are analogous at least to
"associating the user with the particular entity if the received authentication
information corresponds to stored authentication information associating the
user with the particular entity" in claim 1.
Appellants next contend the pending claims do not preempt every way
of "'comparing new and stored information and using rules to identify
3 Appellants argue claims 2-12, 14--20, and 22-24 as a group (App. Br. 4),
and we choose claim 1 as representative of the group. See 37 C.F.R.
§ 4I.37(c)(l)(iv).
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options"' and instead, are narrowly directed to a much more complex and
interrelated invention. App. Br. 5.
Appellants' argument does not persuade us of error. Although the
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," Alice, 134 S. Ct. at 2354, characterizing
preemption as a driving concern for patent eligibility is not the same as
characterizing pre-emption as the sole test for patent eligibility. "The
Supreme Court has made clear that the principle of preemption is the basis
for the judicial exceptions to patentability" and "[ f]or this reason, questions
on preemption are inherent in and resolved by the§ 101 analysis." Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)
(citing Alice, 134 S. Ct. at 2354). Although "preemption may signal patent
ineligible subject matter, the absence of complete preemption does not
demonstrate patent eligibility." Id.
For these reasons, we are not persuaded of error in the Examiner's
conclusion that the claims are directed to the abstract idea of comparing new
and stored information and using rules to identify options. Non-Final Act. 2.
Turning to the second step of the Alice analysis, we find nothing
sufficient to remove the claims from the abstract idea exception that is
ineligible for patenting. See Alice, 134 S. Ct. at 2354.
There is no indication in the record that any specialized computer
hardware or other "inventive" computer components are required in claim 1.
Claim 1 merely employs generic computer components ( a "network") to
perform generic computer functions, i.e., receiving, comparing, and
associating information, which is not enough to transform an abstract idea
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into a patent-eligible invention. Appellants provide no persuasive argument
or objective evidence to the contrary.
For these reasons, we affirm the Examiner's 35 U.S.C. § 101 rejection
of representative claim 1, as well as grouped claims 2-12, 14--20, and 22-
24, not argued separately. See App. Br. 2.
Appellants argue independent claim 13 separately. App. Br. 6. In
addition to the arguments addressed above for claim 1, Appellants contend
the processor in claim 13 is specially configured, and specific components
are limited in scope and design to facilitate the claimed system. Id. In
particular, Appellants argue "[ c ]laim 13 is limited with the requirements that
the processor generate a user interface based on a user-selected healthcare
issue, with the user interface being limited to display comparison
information regarding the treatment options linked to the healthcare issue,
and wherein at least one of the treatment options is provided via healthcare
services provided by the user's entity." Id. at 7.
Appellants' arguments are not persuasive. The prohibition against
patenting an abstract idea "cannot be circumvented by attempting to limit the
use of the formula to a particular technological environment' or adding
'insignificant postsolution activity."' Bilski v. Kappas, 561 U.S. 593, 610-
11 (2010) ( citation omitted). The requirement that the processor generate a
user interface based on input data amounts to nothing more than
insignificant extrasolution activity. That the user interface displays certain
information-namely comparison information regarding the treatment
options linked to the healthcare issue, wherein at least one of the treatment
options is provided via healthcare services provided by the user's entity-is
even less significant activity.
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Moreover, limiting an abstract concept of "comparing new and stored
information and using rules to identify options" to a general purpose
computer having generic components, such as the "processor" recited in
claim 13, does not make the abstract concept patent-eligible under 35 U.S.C.
§ 101. As recognized by the Supreme Court, "the mere recitation of a
generic computer cannot transform a patent-ineligible abstract idea into a
patent-eligible invention." Alice, 134 S. Ct. at 2358; see id. at 2359
( concluding claims "simply instruct[ ing] the practitioner to implement the
abstract idea of intermediated settlement on a generic computer" are not
patent eligible); see also Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709,
715-16 (Fed. Cir. 2014) (claims merely reciting abstract idea of using
advertising as currency as applied to particular technological environment of
the Internet are not patent eligible); Accenture Global Servs., GmbH v.
Guidewire Software, Inc., 728 F.3d 1336, 1344-45 (Fed. Cir. 2013) (claims
reciting "generalized software components arranged to implement an
abstract concept [of generating insurance-policy-related tasks based on rules
to be completed upon the occurrence of an event] on a computer" are not
patent eligible); Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333-34 (Fed.
Cir. 2012) ("[s]imply adding a 'computer aided' limitation to a claim
covering an abstract concept, without more, is insufficient to render [a]
claim patent eligible").
None of the hardware recited in claim 13 ("storage," "network
interface," "processor") "offers a meaningful limitation beyond generally
linking 'the use of the [ method] to a particular technological environment,'
that is, implementation via computers." Alice, 134 S. Ct. at 1291 (quoting
Bilski, 561 U.S. at 610-11). The Specification discusses only conventional
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and generic servers, networks, storage, and processors. See, e.g., Spec. ,r 25.
Generic authentication is also described. Id. ,r 30.
No data is "transformed" by claim 13, but rather, it merely is made
part of a user interface or webpage, which is generated in a conventional
manner. See Spec. ,r,r 3 0, 31, 34, 102. Receiving or transmitting data over a
network is also well-understood, routine, and conventional. See, e.g.,
Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1321 (Fed.
Cir. 2016); (utilizing an intermediary computer to forward information); OIP
Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015)
(sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d
1350, 1355 (Fed. Cir. 2014) (computer receives and sends information over
a network).
For these reasons, we are not persuaded the Examiner erred in
concluding claim 13 is directed to patent ineligible subject matter.
Accordingly, we sustain the Examiner's§ 101 rejection of claim 13.
Rejection of Claims 1-20 and 22-24 under 35 USC§ 103(a)
In rejecting claim 1 for obviousness, the Examiner found Soto teaches
all of the recited limitations, except "wherein at least one of the plurality of
treatment options is provided via healthcare services provided by the entity,"
and "wherein the user interface further comprises information regarding the
healthcare services provided to the user by the entity," for which the
Examiner relied on Schoenberg. Non-Final Act. 4.
Appellants contend the Examiner's "reliance on the Soto patent is
misplaced." App. Br. 9. Appellants argue the Examiner erred because "the
'user' of Soto cited by the Office Action as entering authorization
information for secured access to information is not a particular user seeking
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to make an individual healthcare decision, but instead is a healthcare
provider .... " Id. at 10 (citing Soto col. 9: 34--46).
We disagree. Appellants' argument is not commensurate with the
scope of the claim. The plain language of claim 1 does not recite or
otherwise require4 that a "user" provide the authentication information
received in the claim. Indeed, the claim is silent with regard to the source of
the authentication information. Moreover, as the Examiner found, Soto
teaches "[ s Jome configurations provide a plurality of graphical display
options that are configured to help clinicians and patients understand model
results and drive shared decision making." Soto col. 8:56-60; see also Non-
Final Act. 3. Thus, Soto teaches, or at least suggests, a user (e.g., patient)
making a healthcare decision based on information presented in a graphical
user interface.
Appellants next argue "the user recited in claim 1 is associated with a
particular entity and is a customer of healthcare services-a relationship that
is not disclosed anywhere in Soto." App. Br. 10. Appellants also argue the
recited "entity" must be the employer of the user. Id. at 11 ( citing Spec.
,r,r 31, 33, 43, and 93).
Neither argument is persuasive. We decline Appellants' invitation to
interpret the recited term "entity" narrowly to mean the user's employer.
Nowhere do Appellants define the term "entity" in the Specification, and
each of the paragraphs Appellants cite describes an embodiment of the
invention or provides mere examples. Appellants had the opportunity to
4 We give the contested claim limitations the broadest reasonable
interpretation consistent with the Specification. See In re Morris, 127 F.3d
1048, 1054 (Fed. Cir. 1997).
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recite "employer" explicitly in the claim or define "entity" as a "user's
employer" in the Specification and decided not to do so. Accordingly,
because Appellants' arguments are not commensurate with the broadest
reasonable interpretation of claim 1, they do not demonstrate error in the
Examiner's rejection. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982)
(limitations not appearing in the claims cannot be relied upon for
patentability).
With regard to Appellants' argument that Soto does not teach or
suggest an association between the user and an entity, we are similarly
unpersuaded. The Examiner found Soto teaches users that are medical
providers, patients, purchasers, payers, or combinations thereof. Ans. 4
( citing Soto col. 33 :36-39). The Examiner also found some configurations
in Soto provide graphical display options that are configured to help
clinicians and patients understand model results and drive shared decision
making. Non-Final Act. 4 (citing Soto col. 8:56-9:4).
Appellants have not persuaded us that these teachings in Soto would
have failed to suggest the disputed claim limitation to an artisan of ordinary
skill. The test for obviousness is not whether the claimed invention is
expressly suggested in any one or all of the references, but whether the
claimed subject matter would have been obvious to those of ordinary skill in
the art in light of the combined teachings of those references. See In re
Keller, 642 F.2d 413,425 (CCPA 1981). Moreover, the Examiner does not
contend, nor is the Examiner required to demonstrate, that the identical text
of rejected claim 1 appears in the cited references. In re Bond, 910 F.2d
831, 832 (Fed. Cir. 1990).
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Appellants next argue Soto does not teach two types of information
recited in the "generating" step of claim 1. 5 First, Appellants argue Soto
does not teach or suggest that "comparison information comprises
information for each of the plurality of treatment options gathered from a
plurality of individuals that used at least one of the plurality of treatment
options in treating the healthcare issue." App. Br. 10. Appellants
acknowledge Soto teaches information from individuals that have used a
treatment option. Id. (citing Soto col. 8:56-col. 9:4). Appellants, however,
argue the treatment benefits in Soto are derived from previously conducted
randomized clinical trials, and not from a plurality of individuals that used
one or more of the treatment options, as claim 1 requires. Id. at 10-11.
Appellants' arguments are not persuasive because Appellants do not
persuasively address or explain why data from previously conducted
randomized clinical trials, as taught in Soto, "necessarily cannot provide the
recited detailed information" (Reply Br. 18) or at least suggest the required
data from individuals that previously used the treatment options. Again, the
test for obviousness is not whether the claimed invention is expressly
suggested in any one or all of the references, but whether the claimed subject
5 In the event of further prosecution, we leave it to the Examiner to
determine whether the printed matter doctrine applies to the "generating"
step of claim 1. The Federal Circuit has long held that where a limitation
claims printed matter that is not functionally or structurally related to its
physical substrate, the printed matter may not be relied on to distinguish
over the prior art for purposes ofpatentability. In re Gulack, 703 F.2d 1381,
1385 (Fed. Cir. 1983).
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matter would have been obvious to those of ordinary skill in the art in light
of the combined teachings of those references. See Keller, 642 F.2d at 425.
Appellants next argue Schoenberg does not teach or suggest a second
type of information, "at least one of the plurality of treatment options is
provided via healthcare services provided by the entity" with whom the user
has been authenticated as being associated. App. Br. 11. In particular,
Appellants argue "Schoenberg provides for no such association, particularly
not an association that is accomplished with stored authentication
information," as required by claim 1. Id.
Appellants' argument is not persuasive because Appellants attack
Schoenberg individually, even though the Examiner relied on the
combination of Soto and Schoenberg in rejecting claim 1. In re Mouttet, 686
F.3d 1322, 1333 (Fed. Cir. 2012) (citing Keller, 642 F.2d at 425) ("[T]he test
for obviousness is what the combined teachings of the references would
have suggested to those having ordinary skill in the art."). Nonobviousness
cannot be established by attacking the references individually when the
rejection is predicated upon a combination of prior art disclosures. See In re
Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Appellants' arguments do not address the rejection actually made by
the Examiner. Here, the Examiner relied on Soto for the "receiving" and
"associating" steps of claim 1. Non-Final Act. 3. The Examiner relied on
Schoenberg as teaching a method wherein at least one of the plurality of
treatment options is provided via healthcare services provided by the entity,
and wherein the user interface further comprises information regarding the
healthcare services provided to the user by the entity. Id. at 11.
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For these reasons, we are not persuaded the Examiner erred in finding
the combination of Soto and Schoenberg teaches or suggests the disputed
limitations of claim 1.
Appellants next contend the Examiner erred in combining the
teachings of Soto and Schoenberg. App. Br. 13. Appellants' arguments rest
on Appellants' view that "an inquiry must be made as to whether the prior
art provides any teaching or suggestion to one of ordinary skill in the art to
make the changes" to the primary reference as taught by the secondary
reference. Id. at 15.
We are not persuaded the Examiner erred. In KSR International Co.
v. Teleflex Inc., 550 U.S. 398 (2007), the Supreme Court held that the
motivation to combine references need not be found expressly in the prior
art itself but may be explained by the fact finder. We find the Examiner
provides "articulated reasoning with some rational underpinning to support
the legal conclusion of obviousness." In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006). Here, the Examiner concluded "the claimed invention is merely
a combination of old elements, and in the combination each element merely
would have performed the same function as it did separately, and one of
ordinary skill in the art would have recognized that the results of the
combination were predictable." Non-Final Act. 4. Appellants have
presented insufficient persuasive argument or objective evidence to rebut the
Examiner's factual findings and conclusions.
For these reasons, we are not persuaded the Examiner erred in
combining the teachings of Soto and Schoenberg.
Appellants make purported separate arguments for the patentability of
dependent claims 2, 3, 5, 6, 14, 15, and 17. App. Br. 16-17. Appellants'
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arguments are conclusory, however, merely reciting the claim limitation, the
teachings of Soto, and stating that the two are not the same. Id. As stated by
the Federal Circuit, Rule 41.37 "require[s] more substantive arguments in an
appeal brief than a mere recitation of the claim elements and a naked
assertion that the corresponding elements were not found in the prior art."
In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011). Accordingly, we are not
persuaded by Appellants' argument that the Examiner erred in rejecting
those claims.
Appellants also make separate arguments for claims 7-12, 18-20, and
22-24, but do not provide any basis for the arguments. See App. Br. 18-21.
It is well settled that mere attorney arguments and conclusory statements,
which are unsupported by factual evidence, are entitled to little probative
value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re
Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (attorney argument is not
evidence).
Accordingly, we sustain the Examiner's§ 103(a) rejection of
independent claim 1, as well as the Examiner's§ 103(a) rejection of
independent claim 13, which Appellants argue is patentable for similar
reasons. See App. Br. 16. We also sustain the Examiner's§ 103(a) rejection
of dependent claims 2, 3, 5-12, 14, 15, 17-20, and 22-24, not argued
separately with particularity. See id. at 16-21.
The Examiner separately rejected claims 4 and 16, which Appellants
also argue separately. See App. Br. 22. In rejecting claims 4 and 16, the
Examiner found the combination of Soto and Schoenberg teaches or
suggests the recited limitations, except a method "wherein the plurality of
individuals from which the information was gathered comprises medical
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professionals who personally faced the healthcare issue themselves and
evaluated and used at least one of the plurality of treatment options on
themselves when impacted by the healthcare issue." Non-Final Act. 9. The
Examiner found Croasdale teaches physicians with disabilities that treat
patients. Id. The Examiner further found "it is implied that the physicians
have undergone many of the treatment options available and can provide a
firsthand account of options." Id.
Appellants contend the Examiner erred in making these findings, but
present insufficient persuasive explanation or objective evidence to rebut
them. App. Br. 22.
Appellants further contend the Examiner has not established a reason
why one of ordinary skill in the art would have combined the teachings of
Soto, Schoenberg, and Croasdale. App. Br. 21.
We disagree. Similar to claim 1, discussed above, we find the
Examiner provided "articulated reasoning with some rational underpinning
to support the legal conclusion of obviousness." Kahn, 441 F.3d at 988.
Here, the Examiner concluded "the claimed invention is merely a
combination of old elements, and in the combination each element merely
would have performed the same function as it did separately, and one of
ordinary skill in the art would have recognized that the results of the
combination were predictable." Non-Final Act. 10. Appellants have
presented insufficient persuasive argument or objective evidence to rebut the
Examiner's factual findings and legal conclusions.
Accordingly, we sustain the Examiner's§ 103(a) rejection of
dependent claims 4 and 16.
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DECISION
We affirm the Examiner's decision rejecting claims 1-20 and 22-24.
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). See
37 C.F.R. § 4I.50(f).
AFFIRMED
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