Ex Parte Green et al

Patent Trial and Appeal BoardMar 22, 2017

13083358 (P.T.A.B. Mar. 22, 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. 13/083,358 04/08/2011 W. T. Green III 110751.00111 7989 27557 7590 BLANK ROME LLP 1825 Eye Street NW WASHINGTON, DC 20006-5403 EXAMINER COLEMAN, CHARLES P. ART UNIT PAPER NUMBER 3626 NOTIFICATION DATE DELIVERY MODE 03/24/2017 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): B elay @ blankrome. com W ashingtonDocketing @ blankrome. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte W. T. GREEN III, JAMES T. INGRAM, JOHNATHAN SAMPLES, and GREGORY H. SCHULENBURG Appeal 2015-000762 Application 13/083,358 Technology Center 3600 Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and TARA L. HUTCHINGS, Administrative Patent Judges. HUTCHINGS, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING STATEMENT OF THE CASE Appellants filed a Request for Rehearing under 37 C.F.R. § 41.52(a)(1) on February 28, 2017, requesting that we reconsider our Decision on Appeal mailed December 28, 2016, in which we affirmed the Appeal 2015-000762 Application 13/083,358 Examiner’s rejection of claims 63—82 under 35U.S.C. § 101 as directed to non-statutory subject matter. We have jurisdiction under 35 U.S.C. § 6(b). ANALYSIS Appellants request that the Board reconsider its decision to affirm the Examiner’s rejection of the pending claims under 35 U.S.C. § 101 in view of a recent Federal Circuit decision, Trading Technologies International v. CQGInc., 2016-1616, 2017 WL 192716 (Fed. Cir. Jan. 18, 2017) (nonprecedential), which issued after our Decision. See Request 1. Appellants seek to analogize the claimed invention to the claims in Trading Technologies. Appellants contend that “[IJooking at the closest prior art of record, the claimed graphical user interface [, like the interface in Trading Technologies,] is intended to solve problems of the prior graphical user interface devices in the context of computerized patient scheduling, relating to speed, accuracy, and usability.” Request 8 (emphasis added). Appellants quote portions of Joao and Detjen that describe computerized patient scheduling, and assert that these portions do not disclose claimed drag-and-drop functionality. Id. at 8—9. Appellants then contend that the claimed drag-and-drop functionality improves over the known GUIs of Joao and Detjen by: (1) allowing a technician to schedule a patient and equipment more quickly, (2) reducing the likelihood of errors by allowing the user to more quickly and easily move a patient or equipment from an incorrect time to a correct time, and (3) increasing usability by allowing the user to visually arrange patients and the required equipment. Id. at 8—10. And Appellants conclude that the claims, thus, are not directed to an abstract idea. Id. at 10. 2 Appeal 2015-000762 Application 13/083,358 However, “[t]he ‘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.” Diamond v. Diehr, 450 U.S. 175, 188—89 (1981). Other than novelty between the cited art and the claimed invention, Appellants provide no other support for Appellants’ contention that the claimed invention seeks to solve problems of known GUIs in the context of computerized patient scheduling, relating to speed, accuracy, and usability. For example, Appellants do not identity, and we do not find, adequate description in Appellants’ Specification identifying a specific problem with prior graphical user interface (“GUI”) devices in the context of computerized patient scheduling that relate to speed, accuracy, and usability, which Appellants’ claimed drag-and-drop functionality seeks to solve. Instead, Appellants’ claims resemble those claims that the Trading Technologies courts distinguishes as patent ineligible. Compare Trading Techs., 2015 WL 774655 at *4 ([i]f the claims simply provided for “setting, displaying, and selecting” data information, CQG would be correct in its assessment that the claims are directed to an abstract idea) with independent claim 73 (“[a] method for scheduling” that “add[s] or remove[s] flags” and “schedul[es]” with a GUI by “selecting” and “dragging”); see also Trading Techs., 2017 WL 192716 *3 (“ineligible claims generally lack steps or limitations specific to a solution of a problem, or improvement in the functioning of technology”). In Trading Technologies, the district court found that the claims are directed to solving a problem that existed with prior art GUIs, namely, that the best bid and best ask prices would change based on updates received from the market. There was a risk with the 3 Appeal 2015-000762 Application 13/083,358 prior art GUIs that a trader would miss her intended price as a result of prices changing from under her pointer at the time she clicked on the price cell on the GUI. Trading Techs. Inti, Inc. v. CQG, Inc., No. 05-cv-4811, 2015 WL 774655 *4 (N.D. 111. Feb. 24, 2015). Similarly, the Federal Circuit found [t]he patents explain problems that arise when a trader attempts to enter an order at a particular price, but misses the price because the market moved before the order was entered and executed. It also sometimes occurred that trades were executed at different prices than intended, due to rapid market movement. This is the problem to which these patents are directed. Trading Techs., 2017 WL 192716 at *1. To solve this problem, the invention keeps prices static in positions, and allows quantities at each price to change. Trading Techs., 2015 WL 774655 at *4, Trading Techs., 2017 WL 192716 at *1 (“the system pairs orders with the static display of prices and prevents order entry at a changed price”). In this way, Trading Technologies is consistent with precedent recognizing that specific technologic modifications to solve a problem or improve the functioning of a known system generally produce patent- eligible subject matter. See, e.g., DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014); MCRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299, 1315 (Fed. Cir. 2016). No such problem has been identified here, and we are not persuaded that the claims are not directed to an abstract idea. Appellants argue that the claims include elements or a combination of elements sufficiently more than the abstract idea. In this regard, Appellant describes that the claims recite (1) a section where a user adds and removes clinical and administrative flags, and (2) a drag-and-drop graphical user interface. Request 10. Appellants contend that because the claims require 4 Appeal 2015-000762 Application 13/083,358 these two elements, “[allowing the claims to issue would not amount to granting a patent upon the abstract idea of ‘scheduling patients’, as identified by the Examiner and the Board, or even a patent upon the idea of a graphical user interface for scheduling patients. ” Request 11. We are not persuaded by this argument. Although Alice was indeed concerned with preemption, the Federal Circuit has stated that “[w]hile the absence of complete preemption does not demonstrate patent eligibility. . . . 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, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). We are not persuaded that the claims are like the claims at issue in Trading Technologies, nor are we persuaded we misapprehended or overlooked any points of law or fact in rendering our Decision. Therefore, we decline to modify our original Decision. DECISION Appellants’ Request has been granted to the extent that we have reconsidered our Decision in light of Appellants’ Request, but is denied in all other respects. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(l)(iv). DENIED 5