Ex Parte Farooq et al

Patent Trial and Appeal Board

Dec 6, 2018

13228661 (P.T.A.B. Dec. 6, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/228,661 09/09/2011
46169 7590 12/10/2018
SHOOK, HARDY & BACON L.L.P.
(Cerner Corporation)
Intellectual Property Department
2555 GRAND BOULEVARD
KANSAS CITY, MO 64108-2613
FIRST NAMED INVENTOR
Faisal Farooq
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.
CRNI.224515 7975
EXAMINER
KANAAN, MAROUN P
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
12/10/2018 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):
IPDOCKET@SHB.COM
IPRCDKT@SHB.COM
BPARKERSON@SHB.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FAISAL F AROOQ, ROMER E. ROSALES, SHIPENG YU,
BALAJI KRISHNAPURAM, and BHARAT R. RA0 1
Appeal2017-010134
Application 13/228,661
Technology Center 3600
Before CAROLYN D. THOMAS, J. JOHN LEE, and
MICHAEL J. ENGLE, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's Final Rejection of claims 1-20, all the pending claims in the
present application. See Claims Appendix. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellants name Cemer Innovation, Inc. as the real party in interest
(App. Br. 3).
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Application 13/228,661
The present invention relates generally to automatically surveying
medical treatment. See Abstract.
Claim 1 is illustrative:
1. A method for automated surveillance of medical
treatment, the method comprising:
obtaining patient records, from an electronic storage
system, for a plurality of patients taking a medication, the medication
being a post-market medicine after labeling approval;
monitoring, with a processor, the patient records for the
patients taking the medication;
identifying, with the processor, a patient reaction profile
reflecting a possible adverse reaction of at least one of the patients to
the medication in response to the monitoring, the patient reaction
profile indicating an outlier feature of a side effect, the outlier feature
unexpected from a clinical trial of the medication; and
reporting the possible adverse reaction;
wherein identifying the possible adverse reaction
comprises correlating the patient reaction profile for the medication
with a known reaction profile for the medication of a progression of
multiple symptoms for a specific adverse reaction different than
adverse reactions known from the clinical trial of the medication, and
identifying the specific adverse reaction as the possible adverse
reaction when a probability from the correlating is above a threshold.
Appellants appeal the following rejection:
Claims 1-20 are rejected under 35 U.S.C. § 101 because the claimed
invention is directed to patent-ineligible subject matter (Final Act. 2-3).
We review the appealed rejection for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010)
(precedential).
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ANALYSIS
Re} ection under § 101
Issue: Did the Examiner err in finding that the claims are directed to
patent-ineligible subject matter?
Alice Corp. v. CLS Bank International, 134 S. Ct. 2347 (2014),
identifies a two-step framework for determining whether claimed subject
matter is judicially excepted from patent eligibility under § 101. According
to Alice step one, "[ w ]e must first determine whether the claims at issue are
directed to a patent-ineligible concept," such as an abstract idea. Alice, 134
S. Ct. at 23 5 5. "If the claims are not directed to an abstract idea [ or other
patent-ineligible concept], the inquiry ends. If the claims are 'directed to' an
abstract idea, then the inquiry proceeds to the second step of the Alice
framework." McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299,
1312 (Fed. Cir. 2016). In analyzing whether a claim is directed to an
abstract idea, we look to other decisions where similar concepts were
previously found abstract by the courts. See Amdocs (Isr.) Ltd. v. Openet
Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016).
In this regard, with respect to independent method claim 1, and
similarly, system claim 18 and computer readable medium claim 14, the
Examiner determines that the claims are directed to the abstract idea of
"using categories to organize, store and transmit information" (Final Act. 3)
which "is described by the obtaining, monitoring, identifying, and reporting
steps in claim 1" (id.). The Examiner further determines that the concepts in
the claims are similar to Electric Power Group (Ans. 3--4) and are "recited at
a high level of generality and [ recited] as performing generic computer
functions routinely used in computer applications" (id. at 5). See, e.g., Elec.
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Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016)
("collecting information, analyzing it, and displaying certain results of the
collection and analysis" are "abstract-idea processes"). The Examiner
further determines that the claimed steps of "performing the steps of
obtaining patient records, monitoring the patient records, identifying a
patient reaction, reporting the possible adverse reaction, and identifying the
possible adverse reaction" in claim 1 "describe the concept of automating
surveillance of medical treatment, which corresponds to concepts identified
as abstract ideas by the courts, such as comparing new and stored
information and using rules to identify options as seen in [ SmartGene, Inc. v.
Advanced Biological Labs., SA, 555 F. App'x 950 (Fed. Cir. Jan. 24, 2014)
(nonprecedential)]" (Final Act. 4).
We determine that the Examiner's cogent analysis relying on judicial
examples (see Ans. 2-7; Final Act. 2---6), shows the Examiner provided an
adequate basis for determining that the claims are directed to an abstract
idea.
Appellants challenge the Examiner's determinations on the ground
that "[t]he Office provides no explanation for how the functional steps
recited demonstrate that the claims are directed to either using categories to
organize, store and transmit information" and "therefore does not present a
primafacie case" (App. Br. 13).
Here, in rejecting claims 1-20 under 35 U.S.C. § 101, the Examiner
analyzed the claims using the Mayol Alice two-step framework, consistent
with the guidance set forth in the USPTO's "2014 Interim Guidance on
Patent Subject Matter Eligibility," 79 Fed. Reg. 74618 (Dec. 16, 2014).
Thus, the Examiner notified Appellants of the reasons for the rejection
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Application 13/228,661
"together with such information and references as may be useful in judging
of the propriety of continuing the prosecution of [the] application."
35 U.S.C. § 132. Therefore, contrary to Appellants' assertions, in doing so,
the Examiner set forth a prima facie case of unpatentability such that the
burden shifted to Appellants to demonstrate that the claims are patent-
eligible.
Appellants further contend that "[t]he present claims are
distinguishable from Cyberfone" (App. Br. 14) because "the claims in
Cyberfone did not include, at least, the automated surveillance features" (id.
at 16).
In Cyberfone, the Court held that "using categories to organize, store,
and transmit information is well-established," and "the well-known concept
of categorical data storage, i.e., the idea of collecting information in
classified form, then separating and transmitting that information according
to its classification, is an abstract idea that is not patent-eligible." Cyberfone
Sys., LLC v. CNN Interactive Grp., Inc., 558 F. App'x 988, 992 (Fed. Cir.
2014 ). Here, as in Cybe,fone, information is received, stored, organized,
and transmitted. Although Appellants are c01Tect that Cybe,:fone did not
include automated surveillance features, we point out that according to
LendingTree, LLC v. Zillow, Inc., 656 F. App'x 991, 996 (Fed. Cir. 2016),
"automating conventional activities using generic technology does not
amount to an inventive concept."
Appellants also contend that the present claims are distinguishable
from SmartGene (App. Br. 15) because "unlike the facts of SmartGene [] the
[present] claims do not recite steps that doctors routinely and consciously
perform" (id. at 17). We are not persuaded by Appellants' argument.
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Appellants fail to persuasively show that doctors do not mentally note
additional adverse reactions to medicine.
In SmartGene, the Federal Circuit concluded that claims reciting
methods and systems of selecting a therapeutic treatment regimen for a
patient with a known disease were directed to an abstract idea. SmartGene,
555 F. App'x 950. The court concluded the claims at issue were abstract
because the claims did "no more than call on a 'computing device,' with
basic functionality for comparing stored and input data rules, to do what
doctors do routinely." SmartGene, 555 F. App'x at 954. The court
explained that other than generic computing components, "every [ claimed]
step is a familiar part of the conscious process that doctors can and do
perform in their heads." SmartGene, 555 F. App'x at 955. Appellants fail to
persuasively distinguish the present claims from SmartGene.
As such, the abstract idea here is not meaningfully different from the
ideas determined to be abstract in other cases.
We now tum to the second step of the Alice framework: "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, 134 S. Ct. at 2355
(alteration in original) (quoting Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 72-73 (2012)).
The Examiner determines that the "[g]eneric computer components
recited as performing generic computer functions that are well-understood,
routine, and unconventional activities amount to no more than implementing
the abstract idea with a computerized system" (Ans. 3; see also Final Act. 3,
citing Appellants' Spec. ,r 15).
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Appellants challenge said determinations on the ground that "the
Office [conceded] that the claims are novel and non-obvious" (App. Br. 17).
However, a finding of novelty or non-obviousness does not require the
conclusion that the claimed subject matter is patent-eligible. Although the
second step in the Mayo/Alice framework is termed a search for an
"inventive concept," the analysis is not an evaluation of novelty or
nonobviousness, but, rather, is 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, 566 U.S. at 90;
see also Diamond v. Diehr, 450 U.S. 175, 188-89 (1981) ("The 'novelty' of
any element or steps in a process, or even of the process itself, is of no
relevance in determining whether the subject matter of a claim falls within
the§ 101 categories of possibly patentable subject matter.").
Appellants further contend that "the claims' narrow limitations
provide a specific process that use particular techniques to analyze
particular information which are used in a practical application" (App. Br.
19).
Here, the claimed sequence of steps in claim 1 merely cover
employing a processor to perform functions, such as obtaining records,
monitoring records, identifying a patient reaction, reporting a reaction, and
correlating reaction profiles (see claim 1 ). However, as noted supra,
information collection and analysis, including when limited to particular
content, is within the realm of abstract ideas. See Elec. Power Grp., 830
F.3d at 1353. Further, as recognized by the Supreme Court, "the mere
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recitation of a generic computer cannot transform a patent-ineligible abstract
idea into a patent-eligible invention." Alice, 134 S. Ct. at 2358-59
( concluding claims "simply instruct[ing] the practitioner to implement the
abstract idea of intermediated settlement on a generic computer" not patent
eligible). Furthermore, data management has been a function of computers
for as long as computers have existed and will not transform an abstract
concept into a patentable invention. See, e.g., Alice, 134 S. Ct. at 2359.
Regarding Appellants' reference to DDR Holdings (see App. Br. 17-
18), we point out that in DDR Holdings, LLC v. Hotels.com, L.P., 773 F .3d
1245, 1259 (Fed. Cir. 2014), the subject claim was held patent-eligible
because it encompassed "an inventive concept" for resolving a "particular
Internet-centric problem." In contrast, we find Appellants' method
performed by a processor ( claim 1) does not provide a solution "necessarily
rooted in computer technology in order to overcome a problem specifically
arising in the realm of computer networks." DDR, 773 F.3d at 1257.
Because we find all claims on appeal merely use a generic computer or
processor as a tool that is used in the way a computer normally functions, we
conclude that the claims fail to impart any discernible improvement upon the
computer or processor; nor do Appellants' claims solve "a challenge
particular to the Internet" as considered by the court in DDR, 773 F.3d at
1256-57.
As for Appellants' contention that "the claims are more similar to
those in BASCOM' (App. Br. 20), we conclude that Appellants have not
persuasively rebutted the Examiner's conclusion that "general-purpose
computers" are being used (see Final Act. 3) and Appellants have not
adequately explained how the claims are performed such that any claimed
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limitations beyond the abstract idea are not routine, conventional functions
of a generic computer. The claims at issue do not require any
nonconventional computer or display components, or even a "non-
conventional and non-generic arrangement of known, conventional pieces,"
but merely call for performance of the claimed data collection, analysis,
correlating, and reporting "on a set of generic computer components."
BASCOM Glob. Internet Serv., Inc. v. AT&T Mobility LLC, 827 F.3d 1341,
1349--52 (Fed. Cir. 2016). Thus, considering the features of the claims,
individually and as an ordered combination, we find there are no additional
elements that transform the nature of the claim into a patent-eligible
application. Alice, 134 S. Ct. at 2355.
We also disagree with Appellants' contention that "the instant claims
are similar to McRo" (App. Br. 20). In McRO, the Federal Circuit concluded
that the claim, when considered as a whole, was directed to a "technological
improvement over the existing, manual 3-D animation techniques" through
the "uses [ of] the limited rules in a process specifically designed to achieve
an improved technological result in conventional industry practice." McRO,
Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1316 (Fed. Cir.
2016).
Specifically, the Federal Circuit found that the claimed rules allow
computers to produce accurate and realistic lip synchronization and facial
expressions in animated characters that previously could only be produced
by human animators; and the rules are limiting because they define morph
weight sets as a function of phoneme sub-sequences. Id. at 1313. In
contrast, here, Appellants have not identified any analogous improvement
attributable to the claimed invention. Although providing information based
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at least in part on post-market monitoring of adverse reactions may improve
a treatment process, it does not achieve an improved technological result.
We see no parallel between the limiting rules described in McRO and the
results-based rules recited in Appellants' claims.
Finally, regarding Appellants' contention that the claims "pose 'no
comparable risk of pre-emption"' (App. Br. 21 ), we point out that "the
absence of complete preemption does not demonstrate patent eligibility."
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015). Moreover, because we hold the claimed subject matter covers patent-
ineligible subject matter, the pre-emption concern is necessarily addressed.
"Where a patent's claims are deemed only to disclose patent ineligible
subject matter under the Mayo framework, [] preemption concerns are fully
addressed and made moot." Ariosa Diagnostics, 788 F.3d at 1379.
Because Appellant's independent claims 1, 14, and 16 2 are directed to
a patent-ineligible abstract concept under the first step of Alice and do not
recite something "significantly more" under the second step of the Alice
analysis, we sustain the Examiner's rejection of these claims as well as the
respective dependent claims under 35 U.S.C. § 101 as being directed to non-
statutory subject matter in light of Alice and its' progeny.
For the foregoing reasons, Appellant's contentions are unpersuasive
as to error in the rejection under 35 U.S.C. § 101.
DECISION
We affirm the Examiner's§ 101 rejection.
2 Alice also confirmed that if a patent's systems claims are no different in
substance from its method claims, they will rise and fall together. 134 S. Ct.
at 2360. The same was true of the Alice patent's media claims. Id.
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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)(l )(iv).
AFFIRMED
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