Ex Parte HOFFMAN et al

Patent Trial and Appeal BoardAug 21, 2018

13490023 (P.T.A.B. Aug. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/490,023 06/06/2012 46169 7590 08/23/2018 SHOOK, HARDY & BACON L.L.P. (Cerner Corporation) Intellectual Property Department 2555 GRAND BOULEVARD KANSAS CITY, MO 64108-2613 FIRST NAMED INVENTOR MARK A. HOFFMAN 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. CRNI.167734 8663 EXAMINER PAULSON, SHEETAL R. ART UNIT PAPER NUMBER 3626 NOTIFICATION DATE DELIVERY MODE 08/23/2018 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): IPDOCKET@SHB.COM IPRCDKT@SHB.COM BPARKERSON@SHB.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MARK A. HOFFMAN, KEVIN MATTHEW POWER, ANDREW MECKLER, MAHCAMEH MOUSSA VI, and BONNIE LINN BATES Appeal2017-004680 Application 13/490,023 Technology Center 3600 Before JOHN A. JEFFERY, BRUCE R. WINSOR, and JUSTIN BUSCH, Administrative Patent Judges. BUSCH, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. Â§ 134(a), Appellants 1 appeal from the Examiner's decision to reject claims 1-8, 10-15, and 17-20, which constitute all the claims pending in this application. We have jurisdiction under 35 U.S.C. Â§ 6(b). Claims 9 and 16 were cancelled. We affirm. 1 Appellants identify the real party in interest as Cemer Innovation, Inc. App. Br. 4. Appeal2017-004680 Application 13/490,023 CLAIMED SUBJECT MATTER Appellants' invention "[relates] to facilitating clinical-trial referrals. In this regard, a clinician and/or patient can be provided with one or more clinical trials for which the patient may be eligible." Spec. ,r 6. Claim 1 is representative and reproduced below: 1. One or more computer-storage media having computer- executable instructions embodied thereon for performing a method for facilitating clinical-trial referrals, the method compnsmg: searching clinical-trial data associated with a plurality of clinical trials to identify one or more clinical trials for which a patient may be eligible to participate based on patient data associated with the patient, wherein the clinical-trial data associated with the plurality of clinical trials is aggregated in a centralized data store; determining a match score for each of the one or more clinical trials for which a patient may be eligible to participate, wherein the match score comprises an extent of a relationship between the patient data and the clinical-trial data based on a number or extent of required criteria, optional criteria, or a combination thereof that are satisfied by the patient; determining a variance amount between the patient data and a clinical-trial criteria that is not satisfied by the patient data thereby disqualifying the patient from being eligible prior to participation in the clinical trial; and providing an indication of the one or more clinical trials for which the patient may be eligible and corresponding match scores and an indication of the variance amount between the patient data and the clinical-trial criteria that is not satisfied by the patient data, wherein the match scores are used to rank the one or more clinical trials among one another for which the patient may be eligible to participate. 2 Appeal2017-004680 Application 13/490,023 REJECTION Claims 1-8, 10-15, and 17-20 stand rejected under 35 U.S.C. Â§ 101, as being directed to ineligible subject matter. Final Act. 2. 2 ANALYSIS The Alice/Mayo Framework The Patent Act defines patent-eligible subject matter broadly: "Whoever 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 therefor, subject to the conditions and requirements of this title." 35 U.S.C. Â§ 101. There is no dispute that claims 1-8, 10-15, and 17-20 are directed to one of these categories. In Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 70 (2012), and Alice Corp. Proprietary Ltd. v. CLS Bank International, 134 S. Ct. 2347, 2354 (2014), the Supreme Court explained that Â§ 101 "contains an important implicit exception" for laws of nature, natural phenomena, and abstract ideas. See Diamond v. Diehr, 450 U.S. 175, 185 (1981). In Mayo and Alice, the Court set forth a two-step analytical framework for evaluating patent-eligible subject matter: (1) "determine whether the claims at issue are directed to" a patent-ineligible concept, such as an abstract idea; and, if so, (2) "consider the elements of each claim both individually and 'as an ordered combination' to determine whether the 2 Claim 9 is mistakenly included in the header for this rejection, Final Act. 2, but Appellants indicate claim 9 is cancelled by amendment, Amendment 5 (Claims App'x) (Dec. 4, 2015). We find the Examiner's typographical error to be harmless. 3 Appeal2017-004680 Application 13/490,023 additional elements" add enough to transform the "nature of the claim" into "significantly more" than a patent-ineligible concept. Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 79); see Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016). Step one in the Mayo/Alice framework involves looking at the "focus" of the claims at issue and their "character as a whole." Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). Instead of using a definition of an abstract idea, "the decisional mechanism courts now apply is to examine earlier cases in which a similar or parallel descriptive nature can be seen-what prior cases were about, and which way they were decided." Amdocs (Isr.) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) (citing Elec. Power Grp., 830 F.3d at 1353-54); accord MANUAL OF PATENT EXAMINING PROCEDURE (MPEP) Â§ 2106.04(a) (9th ed. Rev. 08.2017, Jan. 2018) (instructing Examiners that determining whether a claim recites an abstract idea involves identifying the claimed concept and "comparing the claimed concept to the concepts previously identified as abstract ideas by the courts to determine if it is similar."); see also Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1334 (Fed. Cir. 2016) (finding "both [the Federal Circuit] and the Supreme Court have found it sufficient to compare claims at issue to those claims already found to be directed to an abstract idea in previous cases."). Step two involves the search for an "inventive concept." Alice, 134 S. Ct. at 2355; Elec. Power Grp., 830 F.3d at 1353. For an inventive concept, "more is required than 'well-understood, routine, conventional activity already engaged in'" by the relevant community. Rapid Litig. 4 Appeal2017-004680 Application 13/490,023 Mgmt. Ltd. v. CellzDirect, Inc., 827 F.3d 1042, 1047 (Fed. Cir. 2016) ( quoting Mayo, 566 U.S. at 79--80). Prima Facie Case Appellants' contention that the Examiner has failed to make a prima facie case of ineligibility is unavailing. See App. Br. 8-13. The Federal Circuit has repeatedly noted that "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) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). The court has, thus, held that the U.S. Patent and Trademark Office (USPTO) carries its procedural burden of establishing a prima facie case when its rejection satisfies the requirements of 35 U.S.C. Â§ 132 by notifying the applicant of the reasons for rejection, "together with such information and references as may be useful in judging of the propriety of continuing the prosecution of [the] application." See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011). Thus, all that is required of the Office is that it set forth the statutory basis of the rejection, and the reference or references relied on, in a sufficiently articulate and informative manner as to meet the notice requirement ofÂ§ 132. Id.; see also Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990) (Section 132 "is violated when a rejection is so uninformative that it prevents the applicant from recognizing and seeking to counter the grounds for rejection."). Here, we find the Examiner's rejection satisfies the initial burden of production at least in part by identifying that: (1) the claims are directed to the abstract idea of clinical trial eligibility and an "idea of itself' ( step one in the Mayo/Alice framework); and (2) the remainder of the claims do not 5 Appeal2017-004680 Application 13/490,023 include significantly more than the abstract idea because the generically- recited computer elements are well-understood, routine, and conventional, and therefore do not add a meaningful limitation to the abstract idea (step two in the Mayo/Alice framework). See Final Act. 2, 4; Ans. 2. Accordingly, the Examiner has set forth the statutory basis for the rejection, namely 35 U.S.C. Â§ 101; concluded that the claimed invention is directed to a judicial exception to Â§ 101, namely an abstract idea; and, contrary to Appellants' contention (App. Br. 10-12), explained and analyzed the rejection in sufficient detail to permit Appellants to respond meaningfully. See Jung, 637 F.3d at 1362. And, contrary to Appellants' assertions, none of the Memorandum, Formulating a Subject Matter Eligibility Rejection and Evaluating Applicant's Response to a Subject Matter Eligibility Rejection (May 4, 2016) ("the 2016 Memorandum"), the Board's non-precedential holding in Ex Parte Renald Passion, Appeal No. 2012-011084 (PTAB Feb. 27, 2015), MPEP Â§ 2106(III), and Alice stand for the proposition that an Examiner's conclusion that a claim is directed to an abstract idea must include evidentiary support. First, we note that we are not bound by non-precedential Board opinions. It is true that "[ t ]he question of whether a claim element or combination of elements is well-understood, routine and conventional to a skilled artisan in the relevant field is a question of fact." Berkheimer v. HP Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018). "[W]hether a claim recites patent eligible subject matter is a question of law which may contain underlying facts." Id. ( emphasis added). It is also true that, in Alice, the 6 Appeal2017-004680 Application 13/490,023 Federal Circuit found certain evidence supported the conclusion that the recited subject matter constituted a fundamental economic practice, ultimately supporting the Court's conclusion of ineligibility. Alice, 134 S. Ct. at 2356. Nevertheless, Appellants' cited authority does not stand for the proposition that findings of fact are necessary to support the ultimate conclusion of (in)eligibility in every case: The courts consider the determination of whether a claim is eligible (which involves identifying whether an exception such as an abstract idea is being claimed) to be a question of law. Thus, the court does not require "evidence" that a claimed concept is a judicial exception, and generally decides the legal conclusion of eligibility without resolving any factual issues. MPEP 2106.07(a)(III) (emphasis added) (citations omitted). Finally, contrary to Appellants' arguments (App. Br. 13-15), we find the Examiner's failure to recite each dependent claim limitation and address its patent-eligibility separately is not fatal to the rejection. See Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat. Ass 'n, 776 F.3d 1343, 1348 (Fed. Cir. 2014) (explaining that when all claims are directed to the same abstract idea, "addressing each claim of the asserted patents [is] unnecessary."). Aside from asserting that dependent claims 2-8, 11-14, and 1 7-20 were not addressed individually by the Examiner, and merely reproducing claim 12, Appellants offer no separate arguments for the patent- eligibility of these dependent claims. App. Br. 13-14. The Examiner, thus, notified Appellants of the reasons for the rejection "together with such information and references as may be useful in judging of the propriety of continuing the prosecution of [the] application." 7 Appeal2017-004680 Application 13/490,023 35 U.S.C. Â§ 132. And, in doing so, we find that the Examiner set forth a prima facie case of unpatentability. Step One of the Alice/Mayo Framework Turning to step one of the Alice/Mayo framework, we begin by noting that the Examiner concludes the claims are directed to two separate abstract ideas. First, the Examiner concludes the claims are directed to the abstract idea of "clinical trial eligibility." Final Act. 2; Ans. 3. Second, the Examiner concludes the claims are directed to the abstract idea of an "idea of itself' that our reviewing court has found abstract: "the mental steps of comparing new and stored information and using rules to identify medical options." Ans. 3--4 (citing SmartGene, Inc. v. Advanced Biological Labs., SA, 555 F. App'x 950, 955 (Fed. Cir. 2014), cert. denied, 135 S. Ct. 58 (2014)); see also Final Act. 4 (similarly concluding, without explicitly citing SmartGene, that the claims are "similar to the abstract idea identified by the courts as comparing new and stored information and using rules to identify options."). We find unavailing Appellants' contention that the Examiner abandoned the first abstract idea because the Examiner provided the second abstract idea. App. Br. 18. That is, we find unavailing an unfounded requirement that the claims can only be directed to one abstract idea. Nor do we find availing Appellants' contention that the claims are not directed to the first abstract idea because "clinical trial eligibility" alone does not include or require providing a variance amount and match scores, as recited in claim 1. Id. According to our reviewing court, "identifying the precise nature of [an] abstract idea is not ... straightforward." DDR Holdings, LLC 8 Appeal2017-004680 Application 13/490,023 v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014). That is, according to our reviewing court, [ a ]n abstract idea can generally be described at different levels of abstraction. As the Board has done, the claimed abstract idea could be described as generating menus on a computer, or generating a second menu from a first menu and sending the second menu to another location. It could be described in other ways, including, as indicated in the specification, taking orders from restaurant customers on a computer. Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240-41 (Fed. Cir. 2016); see also RecogniCorp, LLC v. Nintendo Co., Ltd., 855 F.3d 1322, 1327 (Fed. Cir. 2017) (finding "[a]dding one abstract idea (math) to another abstract idea (encoding and decoding) does not render the claim non-abstract."). Independent claim 1 recites, in essence, four distinct steps- ( A) identifying clinical trials for which a patient may be eligible to participate; (B) determining a match score for each of the clinical trials; (C) determining a variance amount between the patient data and a clinical- trial criteria; and (D) providing an indication of the clinical trials for which the patient may be eligible and the variance amount and ranking the clinical trials using match scores. A plain reading of the claim suggests that claim 1 as a whole is directed to comparing new and stored information, albeit limited to its practical application of determining clinical trial eligibility. We discern no error in the Examiner's reliance on SmartGene to support a conclusion that the claims are directed to an "idea of itself' by comparing new and stored information, and using rules to identify options. Ans. 3--4. Appellants correctly identify that SmartGene is a non- precedential decision, Reply Br. 3, but do not persuasively argue that we 9 Appeal2017-004680 Application 13/490,023 may not consider such a decision. See Fed. Cir. R. 32.1 ( d) ("The court may refer to a nonprecedential disposition in an opinion or order and may look to a nonprecedential disposition for guidance or persuasive reasoning .... "). Nor do we find availing Appellants' contention that the facts at issue in SmartGene are different than the facts at issue in this case. Reply Br. 3-5. In SmartGene, the Federal Circuit concluded claims were patent ineligible because they did "no more than call on a 'computing device,' with basic functionality for comparing stored and input data and rules, to do what doctors do routinely." SmartGene, 555 F. App'x at 954. In the instant case, the recited patient data is nothing more than data used in an algorithm process to verify and approve the data using mathematical comparisons and rule-based processes. The claims at issue in SmartGene relied upon "expert rules" for "'evaluating and selecting' from a stored 'plurality of different therapeutic treatment regimens."' Id. at 955. The "expert rules" in SmartGene are analogous to the "clinical-trial data" used to verify the patient data. Thus, we discern no error in the Examiner's reliance on SmartGene. Other Federal Circuit decisions also support a conclusion that Appellants' claims are directed to an abstract idea. In Electric Power, the Federal Circuit concluded claims that essentially recited "collecting information, analyzing it, and displaying certain results of the collection and analysis" were directed to an abstract idea. Elec. Power, 830 F.3d at 1353- 54. The claims before us similarly recite collecting data ( clinical-trial data and patient data), processing it (steps (B) and (C) identified above), and displaying the results of the collection and analysis (step (D) identified 10 Appeal2017-004680 Application 13/490,023 above). And in CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 13 72-73 (Fed. Cir. 2011 ), the Federal Circuit concluded a method is merely an abstract idea and is not patent-eligible under Â§ 101 if the method can be performed by human thought alone, or by a human using pen and paper. A human can use pen and paper to perform steps (A}-(D) provided above. That claims 1 and 15 add computer-storage media having computer- executable instructions to perform steps (A}-(D), and claim 10 adds a computing device to perform step (A) does not change our conclusion. See Alice, 134 S. Ct. at 2357-58. Thus, the disputed claims are not meaningfully different from the claims considered in SmartGene, Electric Power, and CyberSource. This is sufficient to establish the disputed claims are directed to an abstract idea. See Enfzsh 822 F.3d at 1334; Amdocs, 841 F.3d at 1294. Lastly, Appellants' contention that the Examiner's conclusion that the claims are comparable to the claims in SmartGene in the Final Action improperly introduced a new ground of rejection (App. Br. 12) is a petitionable-not appealable-matter and, therefore, is not before us. See 37 C.F.R. Â§ 41.40(a); see also MPEP Â§ 1201 ("The Board will not ordinarily hear a question that should be decided by the Director on petition .... "). Where, as here, no such petition is filed, Appellants' arguments in the Reply Brief regarding the impropriety of the alleged new ground of rejection are deemed waived as untimely. See id. atÂ§ 1207.03(b). Step Two of the Alice/Mayo Framework Next, we tum to step two of the Alice/Mayo framework to determine whether the limitations, when considered both "individually and 'as an 11 Appeal2017-004680 Application 13/490,023 ordered combination'" contain an "inventive concept" sufficient to transform the claimed "abstract idea" into a patent-eligible application. Alice, 134 S. Ct. at 2355-58. Appellants attempt to analogize the claimed invention to the claims in Veracode, Inc. v. Appthority, Inc., 137 F.Supp.3d 17 (D. Mass. 2015), asserting the claimed invention is therefore directed to significantly more than an abstract idea. App. Br. 21-25. According to Appellants, similar to the claims in Veracode, Appellants' claims "provide an iterative and exhaustive process for presenting a user with an effectively complete analysis of eligibility/ineligibility of a patient for multiple clinical trials beyond that which a human could possibly perform." Id. at 25. We are unpersuaded of Examiner error. We initially note that, although district court decisions may provide insightful analysis, we are not bound by such decisions. Moreover, mere attorney arguments and conclusory statements that are unsupported by factual evidence are entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Attorney argument is not evidence, In re Pearson, 494 F.2d 1399, 1405 (CCPA 197 4 ), nor can such argument take the place of evidence lacking in the record, Meitzner v. Mindick, 549 F.2d 775, 782 (CCPA 1977). At the outset, we note Appellants' have not provided persuasive reasoning or evidence in support of their contention that the subject matter of claim 1 is beyond that which a human could perform. Contrary to Appellants' assertions, claim 1 recites searching clinical-trial data associated with a plurality of clinical 12 Appeal2017-004680 Application 13/490,023 trials. We emphasize the term "plurality" to mean the claim may be directed to solely two or three clinical trials. Even assuming that the claimed invention can determine a patient's eligibility for multiple clinical trials beyond a human's ability to perform such a determination ( which has not been shown on this record), the claimed invention does not improve the computer's functionality itself, such as with Enfish's "self-referential table for a computer database." Enfzsh, 822 F.3d at 1336. The claims in Enfish were directed to an improved database configuration that permitted faster searching for data. Id. at 1330-33, 1336. Appellants do not describe an advance in hardware or software that, for example, causes a computer to operate faster or more efficiently. Nor do Appellants identify any recitation in the claims that is directed to an improvement to a problem specifically arising in the realm of computer networks, such as DDR Holdings' overriding of routine and conventional sequence of events ordinarily triggered by clicking a hyperlink. DDR Holdings, 773 F.3d at 1258. Rather, claim 1 is directed to "an economic or other [process] for which the computer is used in its ordinary capacity" as a tool. Enfzsh, 822 F.3d at 1336. Thus, we agree with the Examiner that the additional limitations, separately, or as an ordered combination, do not provide meaningful limitations (i.e., do not add significantly more) sufficient to transform the abstract idea into a patent-eligible application. Final Act. 2; Ans. 3---6. Summary For the above reasons, we are not persuaded the Examiner erred in rejecting claim 1, and claims 2-8, 10-15, and 17-20, not argued separately 13 Appeal2017-004680 Application 13/490,023 with particularity, as being directed to ineligible subject matter under 35 U.S.C. Â§ 101. Accordingly, we sustain the Examiner's rejection. DECISION We affirm the Examiner's decision to rejection claims 1-8, 10-15, and 17-20 as directed to ineligible subject matter under 35 U.S.C. Â§ 101. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). See 37 C.F.R. Â§ 41.50(Â±). AFFIRMED 14