Ex Parte Harrell

Patent Trial and Appeal Board

Aug 24, 2017

13790936 (P.T.A.B. Aug. 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.
13/790,936 03/08/2013 David A. Harrell 16517-000001/U S/CPC 1459
27572 7590 08/28/2017
HARNESS, DICKEY & PIERCE, P.L.C.
P.O. BOX 828
BLOOMFIELD HILLS, MI 48303
EXAMINER
GO, JOHN P
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
08/28/2017 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):
troymailroom @hdp. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID A. HARRELL
Appeal 2016-0031611
Application 13/790,936
Technology Center 3600
Before: MURRIEL E. CRAWFORD, MICHAEL W. KIM, and
PHILIP J. HOFFMANN, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 26, 29-41, and 43—
50. We have jurisdiction to review the case under 35 U.S.C. §§ 134 and 6.
The invention relates generally to “promoting medications through
promotional offers.” Spec. 12.
1 The Appellant identifies Optimizerx Corporation as the real party in
interest. Appeal Br. 3.
Appeal 2016-003161
Application 13/790,936
Claim 26 is illustrative:
26. A computer-implemented method for promoting
prescription medication, comprising:
requesting, by an electronic prescribing application, a
listing of medications having an associated coupon from a server,
the request being transmitted over a network to the server;
receiving, by the electronic prescribing application, a
listing of medications from the server, the listing of medications
being provided in response to the request for a listing of
medications;
storing, by the electronic prescribing application, the
listing of medications received from the server in a memory
residing on a host computing device;
receiving, by the electronic prescribing application, a
request for information regarding a medication from a healthcare
provider, the request for information being subsequent to
receiving the listing of medications;
retrieving, by the electronic prescribing application,
information for a given medication which satisfies the request for
information from a prescribing database, where the prescribing
database resides on the host computing device and the retrieval
being performed in response to the request for information;
determining, by the electronic prescribing application,
availability of a coupon for the given medication by determining
whether the given medication is on the listing of medications,
where the determination being performed in response to the
request for information;
presenting, by the electronic prescribing application, the
given medication on a display;
presenting, by the electronic prescribing application, an
icon in association with the given medication when the given
medication is on the listing of medications, where the icon
indicates availability of a coupon for the given medication;
receiving, by the electronic prescribing application, an
indication that the given medication is to be prescribed to a
patient by the healthcare provider, where the indication specifies
a quantity of given medication to be prescribed;
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Application 13/790,936
requesting, by the electronic prescribing application,
information regarding the coupon, the request being transmitted
over a network to the server and the request being performed in
response to receiving the indication that the given medication is
to be prescribed;
receiving, by the electronic prescribing application, the
information regarding the coupon from the server, the receiving
of the information regarding the coupon occurring in response to
requesting the information regarding the coupon, where the
information regarding the coupon includes a unique identifier for
the coupon assigned by a manufacturer of the given medication;
presenting, by the electronic prescribing application, the
information regarding the coupon on the display;
generating, by the electronic prescribing application, a
prescription for the given medication;
transforming, by the electronic prescribing application, the
prescription by inserting the unique identifier for the coupon into
the prescription; and
sending, by the electronic prescribing application, the
prescription for the given medication electronically to a
pharmacy, where the prescription includes the unique identifier
for the coupon and the electronic prescribing application is
implemented by computer-readable instructions executed by a
computer processor residing on the host computing device.
The Examiner rejected claims 26, 29-41, and 43—50 under 35 U.S.C.
§ 101 as being directed to ineligible subject matter in the form of an abstract
idea.
We AFFIRM.
ANAFYSIS
We are not persuaded by the Appellant’s arguments of subject matter
eligibility. Specifically, the Appellant argues the claimed system and
method are not an abstract idea because they involve “specific interactions”
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between two computer applications that are not conventional, establish a
solution to a business problem that “is particular to the Internet,” involve
coupons in digital format that is thus “rooted in computer technology,” and
are new to the field of medicine prescriptions. Appeal Br. 14—18, Reply
Br. 2-3.
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101. The
Supreme Court, however, has long interpreted § 101 to include implicit
exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are
not patentable. E.g., Alice Corp. Pty. Ltd. v. CIS Banklnt’l, 134 S. Ct.
2347, 2354 (2014).
In determining whether a claim falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court’s two-
step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296—97
(2012)). In accordance with that framework, we first determine whether the
claim is “directed to” a patent-ineligible abstract idea. See Alice, 134 S. Ct.
at 2356 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in
petitioners’ application explain the basic concept of hedging, or protecting
against risk.”); Diamond v. Diehr, 450 U.S. 175, 184 (1981) (“Analyzing
respondents’ claims according to the above statements from our cases, we
think that a physical and chemical process for molding precision synthetic
rubber products falls within the § 101 categories of possibly patentable
subject matter.”); Parker v. Flook, 437 U.S. 584, 594—595 (1978)
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(“Respondent’s application simply provides a new and presumably better
method for calculating alarm limit values.”); Gottschalk v. Benson, 409 U.S.
63, 64 (1972) (“They claimed a method for converting binary-coded decimal
(BCD) numerals into pure binary numerals.”).
The patent-ineligible end of the spectrum includes fundamental
economic practices, Alice, 134 S. Ct. at 2357; Bilski, 561 U.S. at 611;
mathematical formulas, Flook, 437 U.S. at 594—95; and basic tools of
scientific and technological work, Benson, 409 U.S. at 69. On the patent-
eligible side of the spectrum are physical and chemical processes, such as
curing rubber, Diamond, 450 U.S. at 184 n.7, “tanning, dyeing, making
waterproof cloth, vulcanizing India rubber, smelting ores,” and a process for
manufacturing flour, Gottschalk, 409 U.S. at 67.
If the claim is “directed to” a patent-ineligible abstract idea, we then
consider the elements of the claim—both individually and as an ordered
combination—to assess whether the additional elements transform the nature
of the claim into a patent-eligible application of the abstract idea. Alice, 134
S. Ct. at 2355. This is a search for an “inventive concept”—an element or
combination of elements sufficient to ensure that the claim amounts to
“significantly more” than the abstract idea itself. Id.
Independent method claim 26 recites requesting, receiving, storing,
and presenting information, determining if particular information is in a list,
“generating a prescription,” appending additional information to the
prescription, and transmitting the prescription and embedded additional
information. The Specification describes that the generating of a
prescription involves retrieving information and populating fields in a form.
Spec. 130.
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Claim 26 is, therefore, directed to requesting, receiving, storing,
organizing, and transmitting information.
This is very much like the method found to be an abstract idea in
Cyberfone, where 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
Systems, LLC v. CNN Interactive Group, Inc., 558 Fed. Appx. 988, 992
(Fed. Cir. 2014). Here, as in Cyberfone, information is stored, organized,
and transmitted, and claim 1, therefore, merely recites an abstract idea.
Turning to the second step of the Alice analysis, because we find that
claim 26 is directed to an abstract idea, the claim must include an “inventive
concept” in order to be patent-eligible, i.e., there must be an element or
combination of elements that is sufficient to ensure that the claim in practice
amounts to “significantly more” than the abstract idea itself.
Claim 26 recites the use of an “application,” a “server,” “memory
residing on a host computing device,” a “display,” and “computer-readable
instructions executed by a computer processor residing on the host
computing device.” The application is described as being hosted on a server
that can communicate with a public network, and “includes a processor, a
memory, an input device and an output device. The processor is connected
to the memory, the input device and the output device. In an example
embodiment, the processor includes a general purpose processor.” Spec.
118. This describes a general purpose computer. The server, memory,
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display, and software instructions also merely refer to common, general
purpose computer technology.
Therefore, claim 26, at best, utilizes only a generic computer
component, which does not constitute an inventive concept. “[A]fter Alice,
there can remain no doubt: recitation of generic computer limitations does
not make an otherwise ineligible claim patent-eligible. The bare fact that a
computer exists in the physical rather than purely conceptual realm is beside
the point.” DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256
(Fed. Cir. 2014) (internal citations and quotation marks omitted).
Nothing in claim 26 purports to improve computer functioning or
“effect an improvement in any other technology or technical field.” Alice,
134 S. Ct. at 2359. Although the Appellant argues that conveying coupons
along with prescriptions for medicine is new and unconventional (Appeal
Br. 15, Reply Br. 2—3), we are unpersuaded that delivering coupons as
incentives to purchase products is an unconventional or uncommon practice
in our system of commerce. Indeed, the Appellant notes that “[electronic
prescribing applications are commonly used by physicians when prescribing
medication.” Appeal Br. 7. The claimed invention, thus, merely combines a
commonly used prescription process, which merely automates a commonly-
used manual process, with a commonly-used business practice (coupons),
and implements it on a general purpose computer.
Nor does claim 26 solve a problem unique to the Internet. See DDR
Holdings, 773 F.3d at 1257. The Appellant argues that the claimed
invention is “particular to the Internet” (Appeal Br. 16), but the claims do
not require the use of the Internet, instead reciting only “a network,” which
may be local or private.
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The claim also is not adequately tied to “a particular machine or
apparatus.” Bilski v. Kappos, 561 U.S. 593, 601 (2010). This is because the
claim merely relies on general purpose computers, and perform basic tasks
such as sending and receiving data, storing data, comparing data,
manipulating data into data fields, and displaying data, which are functions
any general purpose computer is capable of performing.
Because claim 26 is directed to an abstract idea and nothing in the
claim adds an inventive concept, the claim is not patent-eligible under § 101.
Therefore, we sustain the Examiner’s rejection of claim 26 under 35 U.S.C.
§101.
The Appellant argues independent method claim 34 recites similar
language as claim 26, and that the claim represents eligible subject matter
for the same reasons as claim 26. Appeal Br. 17. Because the language of
claim 34 is substantially similar to that of claim 26 under the Alice analysis,
we also sustain the rejection of claim 34 under 35 U.S.C. § 101.
We discern no meaningful distinction between independent method
claims 26 and 34, and independent system claim 41; all of these claims are
directed to the same underlying invention. Therefore, we also sustain the
rejection of claim 41 under § 101. As the Federal Circuit has made clear
“the basic character of a process claim drawn to an abstract idea is not
changed by claiming only its performance by computers, or by claiming the
process embodied in program instructions on a computer readable medium.”
See CyberSource, 654 F.3d 1366, 1375—76 (Fed. Cir. 2011) (citing In re
Abele, 684 F.2d 902 (CCPA 1982)).
The Appellant does not advance argument specific to dependent
claims 29—33, 35—40, and 43—50, and, thus, waives argument on these
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claims. Therefore, we also sustain the rejection of these claims under 35
U.S.C. § 101.
DECISION
We affirm the rejection of claims 26, 29-41, and 43—50 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)(l)(iv).
AFFIRMED
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