Ex Parte Fuhrmann et al

Patent Trial and Appeal Board

Mar 26, 2018

14047723 (P.T.A.B. Mar. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/047,723 10/07/2013
91213 7590 03/28/2018
Epic Systems Corporation
c/o Quarles & Brady LLP - Attn: IP Docket
411 E. Wisconsin A venue
Suite 2350
Milwaukee, WI 53202-4426
FIRST NAMED INVENTOR
David E. Fuhrmann
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.
310265.00174 1088
EXAMINER
NGUYEN, TRAN N
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
03/28/2018 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):
pat-dept@quarles.com
patents@epic.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID E. FUHRMANN, KHIANG SEOW, and
CHARLES S. SQUIRES 1
Appeal2017-000319
Application 14/04 7, 723
Technology Center 3600
Before JOHN A. EV ANS, LARRY J. HUME, and JOYCE CRAIG,
Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 2-7 and 9-22, which are all claims pending in the
application. Appellants have canceled claims 1 and 8. We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM.
1 According to Appellants, the real party in interest is Epic Systems Corp.
App. Br. 2.
Appeal2017-000319
Application 14/04 7, 723
STATEMENT OF THE CASE2
The Invention
Appellants' disclosed embodiments and claimed invention "relate[]
generally to health record management, and more particularly, this patent
relates to a system and method for facilitating cross enterprises data sharing
of healthcare information." Spec. i-f 2 (emphasis added).
Exemplary Claim
Claim 2, reproduced below, is representative of the subject matter on
appeal:
2. A method for sharing patient charts among a
plurality of computer systems corresponding to a plurality of
geographically diverse health care organizations in
communication through a network comprising the steps of:
storing a first patient chart corresponding to examination
of a patient in a data repository in communication with the
computer system at a first health care organization at a first
geographic location;
generating a retrieval key, the retrieval key comprising
information related to the patient and a health enterprise
identifier identifying the first health care organization;
encrypting the retrieval key;
generating a first release authorization (RA) token
including the retrieval key and identifying at least a portion of
the first chart authorized to be accessed from at least one other
2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed
Jan. 19, 2016); ReplyBrief("ReplyBr.," filed Sept. 13, 2016); Examiner's
Answer ("Ans.," mailed July 28, 2016); Final Office Action ("Final Act.,"
mailed July 2, 2015); and the original Specification ("Spec.," filed
Oct. 7, 2013).
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health care organization, and storing the first RA token and the
retrieval key in an authorization vault memory structure;
receiving the first RA token from a computer system at a
second health care organization at a second geographic location
and using the first RA token including the retrieval key to
request access to the first patient chart;
receiving a second release authorization (RA) token
corresponding to a second patient chart produced at the second
health care organization, the second RA token identifying at
least a portion of the second chart authorized to be accessed
from at least one other health care organization, and
storing the second RA token with the first RA token in
the data repository at the first health care organization, wherein
the first and second RA tokens are accessible through the
network to provide a patient medical history compiled from
geographically diverse health care organizations, and wherein
the computer system is accessible to retrieve a consent form
authorizing access to the portion of each of the first and second
patient charts identified by the first and second RA tokens,
respectively.
Rejection on Appeal3
Claim 2-7 and 9-22 stand rejected under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter. Final Act. 2.
CLAIM GROUPING
Based on Appellants' arguments (App. Br. 5---6), we decide the appeal
of the patent-ineligible subject matter rejection of claims 2-7 and 9-22 on
the basis of representative claim 2. 4
3 In the event of further prosecution, we leave it to the Examiner to
determine whether claim 9 should be rejected under pre-AIA 35 U.S.C.
§ 112, second paragraph, or AIA 35 U.S.C. § 112(b ). Claim 9 depends from
canceled claim 8.
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ISSUE
Appellants argue the rejection of claim 2 under 35 U.S.C. § 101 as
being directed to patent-ineligible subject matter is in error. These
contentions present us with the following issue:
Did the Examiner err in concluding claim 2 is drawn to a judicial
exception, i.e., an abstract idea, without significantly more, and thus is
patent-ineligible?
ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. We do not consider arguments
Appellants could have made but chose not to make in the Briefs, and we
deem any such arguments waived. 37 C.F.R. § 41.37(c)(l)(iv).
We disagree with Appellants' arguments with respect to claims 2-7
and 9-22 and, unless otherwise noted, we incorporate by reference herein
and adopt as our own: (1) the findings and reasons set forth by the Examiner
in the action from which this appeal is taken, and (2) the reasons and
rebuttals set forth in the Examiner's Answer in response to Appellants'
arguments. We highlight and address specific findings and arguments
regarding claim 2 for emphasis as follows.
4 "Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately." 3 7 C.F .R. § 41.3 7 ( c )( 1 )(iv).
In addition, when Appellants do not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
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Application 14/04 7, 723
Appellants contend, "[t]he sole issue on appeal ... is whether the
Examiner has established a prima facie case that the claims are not directed
to patentable subject matter. Applicants respectfully submit that the
rejection does not meet this burden, and that the rejection should be
overturned." App. Br. 5.
The Federal Circuit has held, "the prima facie case is merely a
procedural device that enables an appropriate shift of the burden of
production." Hyatt v. Dudas, 492 F.3d 1365, 1369 (Fed. Cir. 2007). The
Federal Circuit stated that this burden is met by "adequately explain[ing] the
shortcomings it perceives so that the applicant is properly notified and able
to respond." Id. at 1370. It is only "when a rejection is so uninformative
that it prevents the applicant from recognizing and seeking to counter the
grounds for rejection" that the prima facie burden has not been met and the
rejection violates the minimal requirements of 35 U.S.C. § 132. Chester v.
Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990).
Appellants further argue:
To meet the initial burden, the Examiner must clearly and
specifically explain why a claim or claims are unpatentable, so
that applicant has sufficient notice and is able to effectively
respond. For rejections based on subject matter eligibility, the
Examiner must articulate a reasoned rationale that identifies the
judicial exception recited in the claim, and explains why it is
considered an exception. A thorough analysis and a clear
rejection is a critical part of the Examiner's burden .... The
Office Action here does not establish a prima facie case that the
claims are directed to unpatentable subject matter, and the
rejection should be overturned.
The rejection articulated in the Office Action relies
entirely on circular logic that fails to specifically identify
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Application 14/04 7, 723
anything at all, and is so unclear that applicants cannot
effectively respond .... The logic provided in the office action
is not a "reasoned rationale" at all, but is tentative, inconclusive,
and confusing .... [and] effectively leaves it to the Applicant
both to identify the "abstract idea," determine which "type," of
abstract idea applies, and then to provide an argument to the
contrary.
App. Br. 5---6.
On this record, and as discussed further, infra, we disagree with
Appellants and find the Examiner has met the minimal requirements of 35
U.S.C. § 132 in setting forth a prima facie case under§ 101.
Alice Framework
Section 101 provides that anyone who "invents or discovers any new
and useful process, machine, manufacture, or composition of matter, or any
new and useful improvement thereof' may obtain a patent. 35 U.S.C. § 101.
The Supreme Court has repeatedly emphasized that patent protection should
not extend to claims that monopolize "the basic tools of scientific and
technological work." Gottschalkv. Benson, 409 U.S. 63, 67 (1972); Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71 (2012);
Alice Corp. Pty. Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014).
Accordingly, laws of nature, natural phenomena, and abstract ideas are not
patent-eligible subject matter. Id.
The Supreme Court's two-part Mayo/Alice framework guides us in
distinguishing between patent claims that impermissibly claim the "building
blocks of human ingenuity" and those that "integrate the building blocks into
something more." Alice, 134 S. Ct. at 2354. First, we "determine whether
the claims at issue are directed to a patent-ineligible concept." Id. at 2355.
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If so, we "examine the elements of the claim to determine whether it
contains an 'inventive concept' sufficient to 'transform' the claimed abstract
idea into a patent-eligible application." Id. at 2357 (quoting Mayo, 566 U.S.
at 72, 79). While the two steps of the Alice framework are related, the
"Supreme Court's formulation makes clear that the first-stage filter is a
meaningful one, sometimes ending the§ 101 inquiry." 5 Elec. Power Grp.,
LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016).
Alice Step I -Abstract Idea
We note the Supreme Court "has not established a definitive rule to
determine what constitutes an 'abstract idea'" for the purposes of step one.
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1334 (Fed. Cir. 2016) (citing
Alice, 134 S. Ct. at 2357). Our reviewing court has held claims ineligible as
being directed to an abstract idea when they merely collect electronic
information, display information, or embody mental processes that could be
performed by humans. Elec. Power Grp., 830 F.3d at 1353-54 (collecting
cases). At the same time, "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. Under this guidance, we must therefore ensure at step
one that we articulate what the claims are directed to with enough specificity
to ensure the step one inquiry is meaningful. Alice, 134 S. Ct. at 2354
(" [W]e tread carefully in construing this exclusionary principle lest it
swallow all of patent law.").
5 Applying this two-step process to claims challenged under the abstract
idea exception, the courts typically refer to step one as the "abstract idea"
step and step two as the "inventive concept" step. Affinity Labs of Tex., LLC
v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016).
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Appellants contend, "the Office Action fails to identify a judicial
exception." App. Br. 6. Appellants further alleges the Examiner "provide[ s]
a bullet point list of elements of claim 2, and then again circularly,
tentatively, and inconclusively states the following .... " Id. (quoting Final
Act. 3).
Contrary to Appellants' contentions, we find the Examiner, in the
Final Action, concludes the abstract ideas in claim 2 may be characterized
by, inter alia, storing a chart, generating and encrypting a key, identifying
portions of a chart to release (i.e., selecting information), storing data
(tokens) (Final Act. 2-3), "comparing new and stored information and using
rules to identify options ... using categories to organize, store, and transmit
information; and/ or ... organizing information through mathematical
correlations." Final Act. 3. Thus, we find Appellants' arguments unavailing
that the Examiner failed to identify a judicial exception, i.e., an abstract idea.
Under the "abstract idea" step we must evaluate "the 'focus of the
claimed advance over the prior art' to determine if the claim's 'character as a
whole' is directed to excluded subject matter." Affinity Labs, 838 F.3d
at 1257 (citation omitted).
Turning to the claimed invention, claim 2 recites:
A method for sharing patient charts among a plurality of
computer systems corresponding to a plurality of
geographically diverse health care organizations in
communication through a network ....
Claim 2 (preamble).
Method claim 2's limitations also require the steps of "storing a
first patient chart [storing data] ... ; generating a retrieval key
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Application 14/04 7, 723
[generating data] ... ; encrypting the retrieval key [processing data]
... ; generating a first release authorization (RA) token [generating
data] . . . and storing the first RA token and the retrieval key [storing
data]. .. ; receiving a second ... [RA] token [receiving data] ... and
storing the second RA token with the first RA token [storing data] ...
wherein the computer system is accessible to retrieve a consent form
[retrieve data] authorizing access to the portion of each of the first and
second patient charts [accessing data] identified by the first and
second RA tokens, respectively."
In the Answer, the Examiner buttressed the legal conclusion claim 2 is
directed to an abstract idea by stating:
These steps [of claim 2] describe the concept of
generating an encryption key and encrypting this key for
subsequent retrieval, which corresponds to the concepts
identified as abstract ideas by the courts, such as comparing
new and stored information and using rules to identify options
in SmartGene, using categories to organize and store
information for transmission in Cyberfone, and a mathematical
procedure for converting one form of numerical representation
to another in Benson. The concept described in this claim is not
meaningfully different from those found by the courts to be
abstract ideas. As such, the description in this claim is an
abstract idea.
Ans. 3.
Under step one, we agree with the Examiner that the inventions
claimed in each of independent claims 2, 11, and 18 are directed to an
abstract idea, i.e., "comparing new and stored information and using rules to
identify options ... using categories to organize, store, and transmit
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Application 14/04 7, 723
information; and/ or ... organizing information through mathematical
correlations." Final Act. 3.
As the Specification itself observes, "[t]his patent relates generally to
health record management, and more particularly, this patent relates to a
system and method for facilitating cross enterprises data sharing of
healthcare information." Spec. i-f 2. 6 We conclude this type of activity, i.e.,
managing health care records and sharing information, for example, includes
longstanding conduct that existed well before the advent of computers and
the Internet, and could be carried out by a human with pen and paper. See
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir.
2011) ("That purely mental processes can be unpatentable, even when
performed by a computer, was precisely the holding of the Supreme Court in
Gottschalk v. Benson."). 7
6 See also Spec. 37 ("Abstract"):
A method and system for sharing charts associated with a
first patient among system entities within a networked system
wherein different entities maintain different charts for the first
patient, the method comprising the steps of at each of at least a
subset of the entities and for the first patient, when a chart is
generated, generating a release authorization (RA) token for the
chart, maintaining an RA token list including all of tokens
received for the first patient from any other system entities,
when a token is received from another entity, using the received
token to access a chart associated with the received token that is
stored at another entity and when a requesting entity requests a
chart associated with the first patient, providing the chart along
with the RA token list associated with the first patient to the
requesting entity.
7 CyberSource further guides that "a method that can be performed by
human thought alone is merely an abstract idea and is not patent-eligible
under§ 101." CyberSource, 654 F.3d at 1373.
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Our reviewing court has previously held other patent claims ineligible
for reciting similar abstract concepts. For example, while the Supreme
Court has enhanced the § 101 analysis since CyberSource in cases like Mayo
and Alice, they continue to "treat[ ] analyzing information by steps people go
through in their minds, or by mathematical algorithms, without more, as
essentially mental processes within the abstract-idea category." Synopsys,
Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1146-47 (Fed. Cir. 2016)
(alteration in original) (quoting Elec. Power Grp., 830 F.3d at 1354).
In this regard, the claims are similar to claims our reviewing court has
found patent ineligible in Electric Power Group, 830 F.3d at 1353-54
(collecting information and "analyzing information by steps people go
through in their minds, or by mathematical algorithms, without more, [are]
essentially mental processes within the abstract-idea category").
Therefore, in agreement with the Examiner, we conclude claim 2
involves nothing more than identifying, collecting, storing, comparing, and
securely sharing and generating data, without any particular inventive
technology- an abstract idea. See Elec. Power Grp., 830 F.3d at 1354.
We further refer to Content Extraction, where the Federal Circuit has
provided additional guidance on the issue of statutory subject matter by
holding claims to collecting data, recognizing certain data within the
collected data set, and storing that recognized data in memory were directed
to an abstract idea and therefore unpatentable under § 101. Content
Extraction & Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343
(Fed. Cir. 2014).
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Accordingly, on this record, and under step one of Alice, we agree
with the Examiner's conclusion that the claims are directed to an abstract
idea.
Alice Step 2 -Inventive Concept
If the claims are directed to a patent-ineligible concept, as we
conclude above, we proceed to the "inventive concept" step. For that step
we must "look with more specificity at what the claim elements add, in order
to determine 'whether they identify an "inventive concept" in the application
of the ineligible subject matter' to which the claim is directed." Affinity
Labs, 838 F.3d at 1258 (quoting Elec. Power Grp., 830 F.3d at 1353).
In applying step two of the Alice analysis, our reviewing court guides
we must "determine whether the claims do significantly more than simply
describe [the] abstract method" and thus transform the abstract idea into
patentable subject matter. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709,
715 (Fed. Cir. 2014). We look to see whether there are any "additional
features" in the claims that constitute an "inventive concept," thereby
rendering the claims eligible for patenting even if they are directed to an
abstract idea. Alice, 134 S. Ct. at 2357. Those "additional features" must be
more than "well-understood, routine, conventional activity." Mayo, 566
U.S. at 79.
We note, in the Appeal Brief, Appellants fail to respond in any
manner to the Examiner's legal conclusion under Step 2 of the Alice analysis
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(Final Act. 3 et seq.), i.e., that the claimed method may be carried out with a
generic/general purpose computer. 8
In the Reply Brief, Appellants argue the Examiner's rejection "is not
consistent with the points made in the May 19, 2016 [Examiner's training]
memorandum to the Patent Examining Corps, and the rejection should
therefore be overturned." Reply Br. 1.
8 The Examiner states:
The Specification as originally filed appears to disclose
that a machine within the context of the claim may be any
device with one or more processors. This interpretation appears
to envelop a generic/general purpose computer.
The claim further appears to recite generating data tokens
and releasing data based on these tokens. This appears to be
generic computer functions that are well understood, routine,
and conventional activities previously known to the pertinent
industry.
The claim does not include additional elements that are
sufficient to amount to significantly more than the judicial
exception because the additional element( s) or combination of
elements in the claim( s) other than the abstract idea per se
amount( s) to no more than: mere instructions to implement the
idea on a computer, and/or recitation of generic computer
structure that serves to perform generic computer functions that
are well-understood, routine, and conventional activities
previously known to the pertinent industry. Viewed as a whole,
these additional claim element( s) do not provide meaningful
limitation( s) to transform the abstract idea into a patent eligible
application of the abstract idea such that the claim(s) amounts
to significantly more than the abstract idea itself. Therefore, the
claim(s) is/are rejected under 35 U.S.C. 101 as being directed to
non-statutory subject matter.
Final Act. 3--4.
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Appellants' present additional arguments based on these examination
guidelines. Reply Br. 1-3. We have considered these guidelines, which are
based on controlling case law and USPTO policy at the time the guidelines
were issued. However, the Board applies relevant U.S. Supreme Court and
the Federal Circuit case law to the facts of each patent application on appeal.
As intervening case law between the filing of the Appeal Brief and the
Examiner's Answer, Appellants additionally cite Enfish, in prefacing their
arguments in the Reply Brief (1 ). However, we find Appellants' claim 2 is
distinguishable over the claim considered by the court in Enfzsh, which was
determined to be "directed to an improvement in the functioning of a
computer." Enfish, 822 F.3d at 1338. The court in Enfzsh noted: "In
contrast, the claims at issue in Alice and Versata can readily be understood
as simply adding conventional computer components to well-known
business practices." 9 Id.
In the Reply Brief, Appellants argue:
Like Enfzsh, the claims here are directed to an
improvement in computer technology, and in particular, to a
specific implementation of a solution to a problem in the
software arts. In particular, this system provides the ability for a
9 The Supreme Court held that the claims in Alice were drawn to the abstract
idea of intermediated settlement and that "the mere recitation of a generic
computer cannot transform a patent-ineligible abstract idea into a patent-
eligible invention." See Alice, 134 S. Ct. at 2358. Alice involved "a method
of exchanging financial obligations between two parties using a third-party
intermediary to mitigate settlement risk." Id. at 2356. Like the method of
hedging risk in Bilski v. Kappas, 561 U.S. 593, 628 (2010}-which the
Court deemed "a method for organizing human activity"-Alice 's "concept
of intermediated settlement" was held to be "a fundamental economic
practice long prevalent in our system of commerce." Alice, 134 S. Ct.
at 2356.
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Healthcare Organization (HCO) to create a release
authorization that may be used by a second organization that
adheres to a set of standards to request patient information from
the HCO. The release authorization greatly improves the
security of sensitive information that must be shared with other
entities. (See, for example, paragraph [0030]) The claims are
each directed to geographically diverse health care
organizations connected through networked processors
(independent claims 11 and 18), or computer systems
(independent claim 2). The claims each encrypt specific types
of data, for use in a specific application. The focus of the claims
is on the specific asserted improvement in computer
capabilities, not on a process that qualifies as an "abstract idea"
for which computers are invoked merely as a tool. (Enfzsh,
at 11)
Reply Br. 3--4
Evaluating representative claim 2 under step 2 of the Alice analysis,
we agree with the Examiner that claim 2 lacks an inventive concept that
transforms the abstract idea of sharing patient information into a patent-
eligible application of that abstract idea. See Ans. 4---6.
We agree with the Examiner because, as in Alice, we find the
recitation of (1) sharing patient charts using "a plurality of computer systems
... in communication through a network" (claim 2); (2) "sharing charts
associated with a patient among processors ... within a networked system"
(claim 11 ); or (3) "sharing patient charts associated with a patient among
processors ... within a networked system" (claim 18) is simply not enough
to transform the patent-ineligible abstract idea here into a patent-eligible
invention. See Alice, 134 S. Ct. at 2357 ("[C]laims, which merely require
generic computer implementation, fail to transform [an] abstract idea into a
patent-eligible invention.").
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Accordingly, on this record, we are not persuaded of error in the
Examiner's conclusion that the appealed claims are directed to patent-
ineligible subject matter. Therefore, we sustain the Examiner's § 101
rejection of independent claim 2, and grouped claims 3-7 and 9-22, not
argued separately, and which fall therewith. See Claim Grouping, supra.
REPLY BRIEF
To the extent Appellants may advance new arguments in the Reply
Brief (Reply Br. 1-5) not in response to a shift in the Examiner's position in
the Answer, we note arguments raised in a Reply Briefthat were not raised
in the Appeal Brief or are not responsive to arguments raised in the
Examiner's Answer will not be considered except for good cause (see 37
C.F.R. § 41.41(b)(2)), which Appellants have not shown.
CONCLUSION
The Examiner did not err with respect to the patent-ineligible subject
matter rejection of claims 2-7 and 9-22 under 35 U.S.C. § 101, and we
sustain the rejection.
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DECISION
We affirm the Examiner's decision rejecting claims 2-7 and 9-22.
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. § 41.50(±).
AFFIRMED
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