Ex Parte Grady et al

Patent Trial and Appeal Board

Mar 2, 2017

12627846 (P.T.A.B. Mar. 2, 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.
12/627,846 11/30/2009 Ken GRADY 085448-0035 4813
20277 7590 03/06/2017
MCDERMOTT WILL & EMERY LLP
The McDermott Building
500 North Capitol Street, N.W.
WASHINGTON, DC 20001
EXAMINER
HUNTER, SEAN KRISTOPHER
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
03/06/2017 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):
ipdocketmwe @ mwe. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEN GRADY and GIUIA ABANO GRADY
Appeal 2015-000828
Application 12/627,8461
Technology Center 3600
Before NINA L. MEDLOCK, BRUCE T. WIEDER, and
MATTHEW S. MEYERS, Administrative Patent Judges.
WIEDER, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the non-final
rejection of claims 1—3 and 5—11. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
Appellants’ claimed invention “relates to techniques and equipment
that enable patients to track and manage immunizations.” (Spec. 11.)
Claims 1, 6, 7, and 11 are the independent claims on appeal. Claim 1
is illustrative. It recites (emphasis added):
1 According to Appellants, “[t]he real party in interest is NOVARTIS AG.”
(Appeal Br. 1.)
Appeal 2015-000828
Application 12/627,846
1. A computer-implemented method for patient management
of immunizations, comprising steps of:
recording first patient information for a first patient, the
first patient information including a date of birth;
recording information for immunization doses received in
the past by the first patient, the information including the date
each immunization dose was received;
obtaining an immunization schedule via a data network
from a remote computer system;
generating a plurality of recommended immunization
doses for the first patient based on the recorded immunization
doses received in the past by the first patient and the recorded
date of birth of the first patient, each recommended
immunization dose having a recommended time period for
administration of the dose;
recording a selected date of administration for a
recommended immunization dose for the first patient;
displaying a list of the recommended immunization doses
for the first patient, along with their respective date of
administration or recommended time period for administration;
and
recording a selection for the first patient to opt out of
further doses of a first immunization, wherein
in the step of displaying, the list excludes recommended
immunization doses for the first patient, where the doses are for
the first immunization, and
the above steps are performed by one or more computers
programmed to perform the above steps.
REJECTIONS
Claims 1—3, 5, and 7—10 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Fuerst (US 2011/0029488 Al, pub. Feb. 3, 2011).
Claims 6 and 11 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Fuerst and Joao (US 2002/0032583 Al, pub. Mar. 14, 2002).
2
Appeal 2015-000828
Application 12/627,846
Claims 1—3 and 5—11 are rejected under 35 U.S.C. § 101 as directed to
non-statutory subject matter.
ANALYSIS
The §103 rejection of claims 1—3, 5, and 7—10
Fuerst relates to a system “for collecting and storing immunization
and disease data.” (Fuerst, Abstract.) In relevant part, the Examiner finds:
Fuerst does not explicitly disclose
• recording a selection for the first patient to opt out of
further doses of a first immunization, wherein in the step of
displaying, the list excludes recommended immunization doses
for the first patient, where the doses are for the first
immunization, and, [sic]
However, Fuerst does disclose: . . . obtaining patient
consent to receive the vaccination by generating an electronic
consent agreement and storing the patient’s digital signature
acknowledging acceptance . . . [p. 3,10021, of Fuerst], Fuerst
also discloses: . . . vaccine information statements (VIS) and
informed consent with electronic signature capability . . . [p. 5,
10053-0054, of Fuerst],
It would have been obvious to one of ordinary skill at the
time of the invention to expand the method of Fuerst to further
include, recording a selection for the first patient to opt out of
further doses of a first immunization, wherein in the step of
displaying, the list excludes recommended immunization doses
for the first patient, where the doses are for the first
immunization, as recited by the Applicant.
One of ordinary skill in the art at the time of the invention
would have been motivated to expand the method of Fuerst in
this way since it would provide information tools such as lifetime
vaccination tracking, and a vaccination recommendation engine
to address the needs of consumers and employers, [p. 2,10019,
of Fuerst],
(Non-Final Act. 4, first brackets added.)
3
Appeal 2015-000828
Application 12/627,846
Appellants argue that
the entire disclosure of Fuerst fails to disclose that [the discussion
of “Vaccination History” in Fuerst 197—217)] does not
include declined immunization (as described at paragraphs
[0172]-[0181] of Fuerst). Fuerst merely discloses that the
consent form is stored and printed, and does not disclose how the
consent form is used in displaying the recommended doses.
(Appeal Br. 9.) Appellants further argue that
the Examiner fails to provide any basis as to why one of ordinary
skill in the art would more probably exclude the declined
immunization than not exclude the declined immunization.
Rather, it would be more probable that even the once declined
immunization will still be displayed because such information
would be useful for the medical provider.
{Id. at 10.) In short, Appellants argue that “[t]here is simply no motivation
or suggestion in Fuerst to exclude opted-out immunizations from the
displayed list.” (Reply Br. 2.)
The Examiner answers that in view of, e.g., Fuerst’s disclosure of
“immunization lifetime tracking,” and a “[Recommendation engine with
suggested vaccinations due and next recommended visit date,” “Fuerst
seemingly suggests ‘. . . in the step of displaying, the list excludes
recommended immunization doses for the first patient, where the doses are
for the first immunization ....’” (Answer 14—15.)
The Supreme Court in KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398 (2007), explained that, “because inventions in most, if
not all, instances rely upon building blocks long since uncovered,
and claimed discoveries almost of necessity will be combinations
of what, in some sense, is already known,” “it can be important
to identify a reason that would have prompted a person of
ordinary skill in the relevant field to combine the elements in the
way the claimed new invention does.” Id. at 418—19. The
required “expansive and flexible approach,” id. at 415, may look
4
Appeal 2015-000828
Application 12/627,846
at a variety of facts, including prior-art teachings and
marketplace demands and artisans’ background knowledge, “in
order to determine whether there was an apparent reason to
combine the known elements in the fashion claimed by the patent
at issue,” id. at 418; see also id. at 420-421. The Supreme Court
added: “To facilitate review, this analysis should be made
explicit.” Id. at 418. We have repeatedly applied those
requirements in reviewing the adequacy of the Board’s
obviousness analysis, noting that the amount of explanation
needed will vary from case to case, depending on the complexity
of the matter and the issues raised in the record. See NuVasive,
842 F.3d at 1381—82; Ariosa, 805 F.3d at 1364—66; In re Lee,
277 F.3d 1338, 1343 (Fed. Cir. 2002).
Personal Web Techs., LLC v. Apple, Inc., No. 2016-1174, slip op. at 11
(Fed. Cir. Feb. 14, 2017).
We are persuaded that the Examiner erred in rejecting claim 1. The
Examiner does not indicate where Fuerst discloses recording that a patient
has affirmatively opted out of doses of a first immunization. Rather, the
Examiner points to recording whether the patient has consented to receiving
a vaccination. Although, Fuerst records and displays information such as
“[d]ate of vaccination,” “[vjaccination lot number,” “[vjaccination site,”
“[vjaccinator name,” and “[signature” (see, e.g., Fuerst || 229-233), Fuerst
is silent on recording that a consent was offered to the patient and that the
patient opted out of consenting/opted out of receiving doses of that
immunization. The Examiner does not sufficiently explain why it would
have been obvious to include that step. Nor does the Examiner sufficiently
explain why it also would have been obvious to exclude the opted-out-from
recommended immunization from the displayed list of recommended
immunization doses. (See Appeal Br. 10.)
5
Appeal 2015-000828
Application 12/627,846
Independent claim 7 contains similar language and for similar reasons,
we are persuaded that the Examiner erred in rejecting claim 7 and dependent
claims 2, 3, 5, and 8—10.
The §103 rejection of claims 6 and 11
Joao relates to an apparatus and method that “facilitates the creation
and management of a comprehensive healthcare processing system which
can manage patient and client records.” (Joao 113.)
Independent claims 6 and 11 do not include the “opt out” language of
claim 1. However, claim 6 recites, in relevant part, “obtaining a user’s
geographic location; identifying a plurality of medical providers that
administer a first immunization with physical proximity to the user’s
geographic location; and displaying location information for the plurality of
medical providers.”
Appellants argue that neither Fuerst nor Joao discloses these steps.
(Appeal Br. 11.)
The Examiner finds:
Fuerst in view of Joao also discloses: . . . invention can utilize
electronic commerce technologies and security methods,
techniques and technologies, in any and/or all of the instances of
data and/or information processing, and/or data and/or
information transmission. [Joao | 22.] The Examiner
understands the utilization of electronic commerce technologies
and security methods to include the determination of geographic
location. Fuerst in view of Joao also discloses: . . . invention can
also be utilized in order to find and/or to locate providers and/or
payers of, and for, respectively, various healthcare treatments,
healthcare services and/or healthcare goods or products and/or
healthcare related goods or products. (Emphasis added by
Examiner) [p. 4, |0039 of Joao]. Fuerst in view of Joao further
6
Appeal 2015-000828
Application 12/627,846
discloses: . . . invention can also be programmed to provide
notification of the availability of a provider... the availability of
a healthcare facility to provide certain care, the availability of
certain supplies, a body organ, a blood type, . . . and/or the
occurrence of any event which may be of interest to any of the
patients, users, providers, payers, and/or intermediaries . . .
(Emphasis added by Examiner) [p. 4, |0041 of Joao].
(Answer 17, first brackets added.) In short, the Examiner finds that Fuerst in
view of Joao discloses utilization of electronic commerce techniques,
including geographic location, and identifying healthcare providers to
provide certain healthcare.
In response to the Examiner’s obviousness determination (Answer 8,
17), Appellants do not persuasively argue why the Examiner erred, i.e., why
Joao’s disclosure of fmding/locating healthcare providers, in combination
with the disclosure of Fuerst, would not have suggested to one of skill in the
art that the healthcare providers found would have some degree of proximity
to the user’s location, i.e., that Fuerst in view of Joao would have suggested
to one of ordinary skill in the art that the healthcare providers found for the
user should be healthcare providers the user could reasonably expect to be
able to utilize/visit.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 6 under § 103. Independent claim 11 contains similar language and
Appellants make similar arguments. Therefore, for similar reasons, we are
not persuaded that the Examiner erred in rejecting claim 11.
The §101 rejection
In the Answer, a new ground of rejection under § 101 was entered
against claims 1—3 and 5—11. (Answer 9.) The Examiner determined that
7
Appeal 2015-000828
Application 12/627,846
the claims are drawn to an abstract idea, i.e., “a basic concept of providing
healthcare.” (Id.) The Examiner also determined that “[t]he claims do not
amount to significantly more than the abstract idea itself such as not being
an improvement to the functioning of a computer itself.” (Id.) The
Examiner also determined that “the computer related claims require no more
than a generic computer to perform generic computer functions that are well-
understood, routine and conventional activities previously known to the
industry.” (Id.)
Appellants argue that the recitations in claims 1 and 6 of “obtaining an
immunization schedule via a data network” and having the steps “performed
by one or more computers” “make the subject matter of claims 1 and 6 more
than the abstract idea itself.” (Reply Br. 6.) With regard to claims 7 and 11,
Appellants argue that the recitations of “recording, in the non-volatile
memory” and “obtaining an immunization schedule via a data network”
“make the subject matter of claims 7 and 11 more than the abstract idea
itself.” (Id.)
Prior to the filing of briefs in this appeal, the Supreme Court decided
Alice Corp. Pty. Ltd. v. CLSBankInt’l, 134 S. Ct. 2347 (2014). Alice
applies a two-part framework, earlier set out in Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 132 S. Ct. 1289 (2012), “for distinguishing patents
that claim laws of nature, natural phenomena, and abstract ideas from those
that claim patent-eligible applications of those concepts.” Alice Corp.,
134 S. Ct. at 2355.
Under the two-part framework, it must first be determined if “the
claims at issue are directed to a patent-ineligible concept.” Id. If the claims
are determined to be directed to a patent-ineligible concept, then the second
8
Appeal 2015-000828
Application 12/627,846
part of the framework is applied. “We have described step two of this
analysis as 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.’” Id. at 2355 (brackets in original).
In this case, Appellants do not dispute substantively the Examiner’s
determination that the claims are directed to an abstract idea. Rather,
Appellants argue the second part of the Alice framework, i.e., that the
subject matter of the claims is more than the abstract idea itself.
Therefore, we apply the second part of the framework to determine if
“the elements of the claim . . . contain[] an ‘inventive concept’ sufficient to
‘transform’ the claimed abstract idea into a patent-eligible application.”
Alice Corp., 134 S. Ct. at 2357 (citing Mayo, 132 S. Ct. at 1294, 1298).
The claims “do not require an arguably inventive set of components or
methods, such as measurement devices or techniques.” See Electric Power
Grp., LLCv. Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016). The
introduction into the claims of a computer or a computer-implemented
function does not alter the analysis at step two.
[T]he mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea “while adding the words ‘apply it’” is not
enough for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological environment.’”
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implemen[t]” an abstract idea
“on ... a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the preemption concern
that undergirds our §101 jurisprudence. Given the ubiquity of
9
Appeal 2015-000828
Application 12/627,846
computers, wholly generic computer implementation is not
generally the sort of “additional featur[e]” that provides any
“practical assurance that the process is more than a drafting effort
designed to monopolize the [abstract idea] itself.”
Alice Corp., 134 S. Ct. at 2358 (citations omitted).
“[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea ... on a
generic computer.” Id. at 2359. They do not. Taking the claim elements
separately, the function performed by the computer at each step of the
process is purely conventional and adds no inventive concept. Nor do the
claims offer detail about the computer system. In short, the claim
steps/limitations do no more than require a generic computer to perform
generic computer functions.
Considered as an ordered combination, the computer and computer
programs of Appellants’ claimed invention add nothing that is not already
present when the steps are considered separately. Viewed as a whole,
Appellants’ claims simply recite the concept of obtaining information from a
user and using that information to provide known healthcare
recommendations, i.e., recommendations obtained from an immunization
schedule. The claims do not, for example, purport to improve the
functioning of either the processor or the computer. Nor do they effect an
improvement in any other technology or technical field. Instead, the claims
at issue amount to nothing significantly more than an instruction to apply the
abstract idea of obtaining information from a user and using that information
to provide known healthcare recommendations. That is not enough to
transform an abstract idea into a patent-eligible invention. See id. at 2360;
see also Electric Power Grp., 830 F.3d at 1353—56.
10
Appeal 2015-000828
Application 12/627,846
Therefore, we are not persuaded that the Examiner erred in rejecting
claims 1—3 and 5—11 under § 101.
DECISION
The Examiner’s rejection of claims 1—3, 5, and 7—10 under 35 U.S.C.
§ 103(a) is reversed.
The Examiner’s rejection of claims 6 and 11 under 35 U.S.C. § 103(a)
is affirmed.
The Examiner’s rejection of claims 1—3 and 5—11 under 35 U.S.C.
§ 101 is affirmed.
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
11