Ex Parte Ghosh et al

Patent Trial and Appeal Board

Oct 24, 2017

13736732 (P.T.A.B. Oct. 24, 2017)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/736,732 01/08/2013 Rajib Ghosh 1576-0900 1970
10800 7590 10/24/2017
Maginot, Moore & Beck LLP
One Indiana Square, Suite 2200
Indianapolis, IN 46204
EXAMINER
TOMASZEWSKI, MICHAEL
ART UNIT PAPER NUMBER
3686
MAIL DATE DELIVERY MODE
10/24/2017 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte RAJIB GHOSH and HENNING HAYN1
____________________

Appeal 2016-006056
Application 13/736,732
Technology Center 3600
____________________

Before JOHNNY A. KUMAR, CATHERINE SHIANG, and JOYCE
CRAIG, Administrative Patent Judges.

KUMAR, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final
Rejection of claims 1–6 and 12–17. Claims 7–11 and 18–24 are cancelled.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1According to Appellants, Robert Bosch Healthcare Systems, Incorporated
of Palo Alto, California and Robert Bosch GmbH of Stuttgart, Germany are
the real parties of interest in this application. See App. Br. 3.
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Representative Claim
1. A method for assessment of a patient comprising:
receiving with a processor communicatively connected to
a data network nonmedical data corresponding to a patient from
a social network service that is connected to the data network;
identifying with the processor a location information for
the patient indicating a location of travel for the patient with
reference to the non-medical data from the social network
service;
identifying with the processor at least one prescription
medication associated with the patient in patient medical records
stored in a memory operatively connected to the processor in
response to the location of travel exceeding a predetermined
distance from a home address associated with the patient;
generating with the processor a message including a
reminder for the patient to travel with a supply of the at least one
prescription medication; and
sending with the processor the message to an electronic
device associated with the patient through the data network.

Rejection
A. Claims 1–6 and 12–17 are rejected under 35 U.S.C. § 101 as being
directed to a judicial exception.
Grouping of Claims
Based on Appellants’ arguments (App. Br. 7–15), we decide the
appeal on the basis of representative claim 1.
ANALYSIS
We have considered all of Appellants’ arguments and any evidence
presented. We disagree with Appellants’ arguments and we adopt as our
own the findings, legal conclusions, and explanations, as set forth in the
Answer (3–7) in response to Appellants’ arguments. (App. Br. 7–15; Reply
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Br. 2–6). We highlight and address specific findings and arguments for
emphasis in our analysis below.
Issue: Under § 101, did the Examiner err in concluding claim 1 is
directed to patent-ineligible subject matter?2
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.”
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 Bank Int’l, 134 S.
Ct. 2347, 2354 (2014) (quoting Ass’n for Molecular Pathology v. Myriad
Genetics, Inc., 133 S. Ct. 2107, 2116 (2013) (internal quotation marks
omitted)). In Alice, the Supreme Court set forth an analytical “framework
for distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts.” Id. at 2355 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 71–73 (2012)).
The first step in our analysis is to determine whether the claims at
issue are directed to a patent-ineligible concept, such as an abstract idea. See
Alice, 134 S. Ct. at 2355.
If the claims are directed to a patent-ineligible concept, the second
step in the analysis is to “consider the elements of each claim both
individually and ‘as an ordered combination’ to determine whether [there

2 We consider the claims as a whole and give the 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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are] additional elements [that] ‘transform the nature of the claim’ into a
patent-eligible application.” Id. (quoting Mayo, 566 U.S. at 78).
In other words, the second step is to “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.’” Id. (brackets in original) (quoting
Mayo, 566 U.S. at 72–73).
Alice — Step One
Here, regarding the judicially created “abstract idea” exception (Alice,
Step One), Appellants argue Enfish, LLC v. Microsoft Corp., 822 F.3d 1327
(Fed. Cir. 2016) ( “Enfish”) clarifies specific requirements for properly
analyzing whether claims are actually directed to an abstract idea (Reply Br.
5–6) and contend, inter alia:
As presented in the Appeal Brief and in this Reply Brief, the
pending claims are clearly directed to an improvement for
operation of a computerized system.
(Reply Br. 5.)
In the Appeal Brief, Appellants contend:
Instead, claim 1 requires that an assessment method that uses a
processor to identity a location information for the patient
indicating a location of travel for the patient with reference to the
non-medical data from the social network service. Thus, claim 1
is directed to a method of automated assessment
and communication that uses data pertaining to the social
network messages in a portion of the method . . . .

. . . .

. . . . Claim 1 requires using a processor to receive non-medical
data corresponding to a patient from a social network service and
identifying location information of a travel location of travel for
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the patient. These specific limitations of claim 1 are nowhere to
be found in the proposed abstract idea. Furthermore, claim 1 also
requires that the processor identify a prescription medication in
response to an identified distance of travel from the home address
to the travel location exceeds a predetermined threshold and then
transmit a reminder message about traveling with a supply of the
prescription to an electronic device associated with the patient.
Consequently, far from being directed to the proposed abstract
idea of sending messages to provide healthcare, claim 1 is
directed to a specific and non-abstract patient assessment method
that combines specific automated processing of non-
medical social network data that are not typically provided to
healthcare providers, specific geographic processing in the
physical world to identify travel destinations and the distance of
travel, and transmission of specific reminder messages that are
directly related to the need to travel with prescription
medications during travel.
App. Br. 9–10.
We find Appellants’ arguments unpersuasive. We conclude claim 1 is
directed to a generic processor performing mathematical calculations on
certain data. We note the Supreme Court in Alice cautions that merely
limiting the use of an abstract idea “to a particular technological
environment” or implementing the abstract idea on a “wholly generic
computer” is not sufficient as an additional feature to provide “practical
assurance that the process is more than a drafting effort designed to
monopolize the [abstract idea] itself.” Alice, 134 S. Ct. at 2358 (internal
quotation marks and citations omitted).
Here, we conclude Appellants’ claim 1 is distinguishable from the
type of claim considered by the court in Enfish, LLC v. Microsoft Corp., 822
F.3d 1327 (Fed. Cir. 2016), because Appellants’ claim 1 is not “directed to
an improvement in the functioning of a computer,” as was found by the
court regarding the subject claim in Enfish, 822 F.3d at 1338.
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The Examiner finds, and we agree:
Claims 1-6 and 12-17 are directed to an abstract idea of
providing healthcare through patient assessment and processing
information. Providing healthcare through patient assessment is
an abstract idea because it involves certain methods
of organizing human activities and is a fundamental economic
practice (see, for example, claim 1’s recitation of generating and
sending a message including a reminder for the patient to travel
with a supply of the at least one prescription medication, etc.).
Processing information is an abstract idea because it
uses categories to organize, store, and transmit information, etc.;
collects and compares known information; and/or obtains and
compares intangible data, etc. (see, for example, claim 1’s
recitation of identifying location information for the patient,
identifying at least one prescription medication associated with
the patient, etc. Moreover, it is submitted that that the step of
generating and sending the message is an abstract idea because it
requires comparing data and the use of an algorithm and/or
mathematical relationship to determine if the patient’s location
of travel will exceed a predetermined distance from a home
address, etc.).
Ans. 4.
Thus, we conclude claim 1 is directed to an abstract idea because the
claimed method uses mathematical relationships to manipulate data (e.g.,
determining whether patient’s location of travel exceeds a predetermined
distance from a home address) to generate additional information (e.g.,
generate a message for the patient). See Digitech Image Techs., LLC v.
Elecs. for Imaging, Inc., 758 F.3d 1344, 1350–51 (Fed. Cir. 2014) (holding
that “a process of organizing information through mathematical correlations
. . . not tied to a specific structure or machine” is an abstract idea). See also
Enfish, 822 F.3d at 1335 (fundamental economic and conventional business
practices are often found to be abstract ideas, even if performed on a
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computer). See, e.g., OIP Techs., Inc. v. Amazon.com Inc., 788 F.3d 1359
1362–63 (Fed. Cir. 2015).
For at least these reasons, we conclude representative claim 1 is
directed to an abstract idea. (Alice — Step One.)
Alice — Step Two
Proceeding to step two of the Alice test articulated by the Supreme
Court, we further “consider the elements of each claim both 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, 566 U.S. at 78).
Regarding step two of the Alice analysis, Appellants contend, inter
alia:
In the case of claim 1, the claimed medical assessment method is
directed to improving or solving a problem in the field of patient
assessment methods using computerized systems that
incorporate the processor of claim 1 and may include other
technological devices such as the telehealth terminal that is
recited in claim 6. The claim limitations directed to analysis of
patient social network data to identify travel locations and
transmission of reminder messages for traveling with
prescription medications when the travel destinations are farther
than a predetermined distance from the patient’s home address
are directed to improved methods for patient assessment rooted
in computerized systems that are separate from the traditional
healthcare process where patients interact with other humans
instead of with a computerized system. Thus, the reasoning from
DDR Holdings is directly applicable to the limitations of claim 1
to support a finding that claim 1 includes limitations that add
significantly more to an abstract idea.
App. Br. 13.
The Examiner finds:
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In the instant application, it is respectfully submitted
that the alleged improvements of appellant’s claims pertain to the
abstract idea itself (e.g., providing healthcare through patient
assessment and processing information), rather than
improvements to the technology (e.g., improved functioning of
the processor). More specifically, it is submitted that
appellant’s invention does not solve a technological problem
using a technical solution. For example, appellant’s claims
merely recite a processor which is a notoriously well-known
prior art technology that perform well-known functions, such as,
receiving data, identifying information, generating messages,
sending messages, and the like.
Ans. 5.
Here, we conclude the nature of claims 1–6 and 12–17 is not
transformed into a patent-eligible application of the abstract idea presented,
because these claims do nothing more than simply instruct the practitioner to
implement an abstract idea using a generic computer.
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’ “providing healthcare
through patient assessment and processing information” 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 which is used in the way a computer normally
functions, we conclude claims 1–6 and 12–17 fail to impart any discernible
improvement upon the computer or processor, nor do Appellants’ claims
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solve “a challenge particular to the Internet” as considered by the court in
DDR, 773 F.3d at 1256–57.
Thus, we conclude none of Appellants’ claims are like the claim held
patent-eligible by the court in DDR, in which the claimed invention was
directed to the “challenge of retaining control over the attention of the
customer in the context of the Internet,” such that:
Instead of the computer network operating in its normal,
expected manner by sending the website visitor to the third-party
website that appears to be connected with the clicked
advertisement, the claimed system generates and directs the
visitor to the above-described hybrid web page that presents
product information from the third-party and visual “look and
feel” elements from the host website.
DDR, 773 F.3d at 1258–59.
Regarding step two of the Alice test, we find nothing in claims 1–6
and 12–17 that adds anything “significantly more” to transform the abstract
concept of collecting, storing, and analyzing information into a patent-
eligible application. See Alice, 134 S. Ct. at 2357. Appellants do not argue
that each of the steps or functions recited in claims 1–6 and 12–17 is
individually inventive. None of Appellants’ arguments persuasively show
that some inventive concept arises from the ordered combination of these
steps or functions, which, even if true, would be unpersuasive given that we
conclude Appellants’ claims are directed to ordinary steps (or functions) in
data analysis, and are recited in the ordinary order, i.e., following a general
pattern of collecting, analyzing, and communicating the results of the
analyzed information.
We conclude Appellants’ representative claim 1 is directed to a
patent-ineligible abstract concept, and does not recite something
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“significantly more” under the second step of the Alice analysis.
Accordingly, for the reasons discussed above, we sustain the Examiner's
rejection under 35 U.S.C. § 101 of representative claim 1, and grouped
claims 2–6 and 12–17, as being directed to patent-ineligible subject matter in
light of Alice and its progeny. See Grouping of Claims, supra.
DECISION
We affirm the Examiner’s rejection of claims 1–6 and 12–17 under
35 U.S.C. § 101.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 41.50(f).

AFFIRMED