Ex Parte Hummer

Patent Trials and Appeals Board

Jan 28, 2019

13895727 - (D) (P.T.A.B. Jan. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/895,727 05/16/2013
27885 7590
FAY SHARPE LLP
1228 Euclid Avenue, 5th Floor
The Halle Building
Cleveland, OH 44115
01/29/2019
FIRST NAMED INVENTOR
Gregory J. Hummer
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.
HUMM 200007US01 6394
EXAMINER
LULTSCHIK, WILLIAM G
ART UNIT PAPER NUMBER
3626
MAIL DATE DELIVERY MODE
01/29/2019 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 GREGORY J. HUMMER
Appeal2017-010609
Application 13/895,727 1
Technology Center 3600
Before CARLA M. KRIVAK, HUNG H. BUI, and JON M. JURGOV AN,
Administrative Patent Judges.
JURGOV AN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant seeks review under 35 U.S.C. § 134(a) from a Final
Rejection of claims 1, 2, 4--12, and 14--18. Claims 19 and 20 have been
withdrawn from consideration, and claims 3 and 13 have been cancelled.
We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM. 2
1 Appellant identifies the inventor, Gregory J. Hummer, as the real party in
interest. (App. Br. 1.)
2 Our Decision refers to the Specification ("Spec.") filed May 16, 2013, the
Final Office Action ("Final Act.") mailed October 5, 2016, the Advisory
Action ("Second Advisory Act.") mailed March 3, 2017, the Appeal Brief
("App. Br.") filed March 3, 2017, the Examiner's Answer ("Ans.") mailed
June 8, 2017, and the Reply Brief ("Reply Br.") filed August 8, 2017.
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Application 13/895,727
CLAIMED INVENTION
The claims are directed to "a web-based health index calculator that
facilitates incentivizing a user to improve his health in order to realize
monetary savings." (Spec. ,r 2.) The claims recite a method and system for
calculating an aggregated monetary cost associated with an individual's
health index parameters including biometric parameters and behavioral
parameters, and adjusting the health index parameter(s) to obtain an updated
aggregate health cost that would "show the user the amount of health cost
savings that can be achieved by different health index parameter
adjustments." (Abstract.)
Claims 1 and 11 are independent. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A system that facilitates calculating a monetary cost
associated with an individual's health index, comprising:
a processor that executes computer-executable
instructions for calculating a user's health index and a monetary
cost associated therewith;
a computer-readable medium that stores the computer-
executable instructions; and
a server comprising the processor and the computer-
readable medium and configured to provide Internet access to the
processor for presenting calculated cost information to the user
via a graphical user interface on a user device;
wherein the instructions comprise:
receiving a plurality of individual health index
parameter values, the health index parameter values
including values related to biometric data associated with
the user and health behavior data associated with the user;
calculating a cost of each health index parameter;
aggregating the costs of each health index
parameter;
providing the costs of each health index parameter
and the aggregate cost to the user;
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receiving input related to an adjustment to at least
one health index parameter value;
updating the costs of each adjusted health index
parameter and updating the aggregate cost; and
providing the updated cost of each health index
parameter and the updated aggregate cost to the user in real
time.
(App. Br. 27-32 (Claims App'x).)
REJECTIONS & REFERENCES
(1) Claims 1, 4, 5, 9-11, 14, 17, and 18 stand rejected under
35 U.S.C. § 112(a) as failing to comply with the written description
requirement. (Final Act. 14--21; Second Advisory Act. 2. )3
(2) Claims 1, 2, 4--12, and 14--18 stand rejected under
35 U.S.C. § 101 as directed to non-statutory subject matter. (Final Act. 11-
13; Second Advisory Act. 2.)4
3 The Final Office Action rejected claims 3-5, 9, 10, 13, 14, 17, and 18
under 35 U.S.C. § 112(a) as failing to comply with the written description
requirement. (See Final Act. 14.) Appellant subsequently filed an After-
Final Amendment on February 28, 2017, which was entered by the
Examiner via the Advisory Action mailed on March 3, 2017. (See Second
Advisory Act. 1-2.) This After-Final Amendment cancelled claims 3 and
13, and incorporated the limitations of dependent claim 3 into independent
claim 1, and of dependent claim 13 into independent claim 11. The March
3, 2017 Advisory Action indicates the§ 112(a), written description rejection
of claims 3 and 13 "now appl[ies] to claims 1 and 11 under the same
rationale previously provided with respect to claims 3 and 13." (Second
Advisory Act. 2.) Further discussion regarding the status of the Examiner's
rejections is presented in our analysis below.
4 The Final Office Action rejected claims 1-18 under 35 U.S.C. § 101. (See
Final Act. 11.) The March 3, 2017 Advisory Action, however, indicates the
§ 101 rejection of claims 3 and 13 (cancelled via the After-Final
Amendment dated February 28, 2017) now applies to claims 1 and 11,
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(3) Claims 1, 2, 4, 5, 11, 12, and 14 stand rejected under
35 U.S.C. § 103 based on Baby2See's Quit It Now: Cigarette and Alcohol
Use, Cost Calculator (August 15, 2011) (hereinafter "Quit It Now")
(https://web.archive.org/web/20110815025459/http://www.baby2see.com/m
edical/cigarettes_alcohol.html) and Skelly et al. (US 2008/0010086 Al,
published Jan. 10, 2008) ("Skelly"). (Final Act. 21-30; Second Advisory
Act. 2.)5
(4) Claims 6-8 and 15 stand rejected under 35 U.S.C. § 103 based
on Quit It Now, Skelly, and Akradi (US 2012/0191469 Al, published July
26, 2012). (Final Act. 30-33; Second Advisory Act. 2.) 6
which incorporate the features of claims 3 and 13. (Second Advisory Act.
2.)
5 The Final Office Action rejected claims 1, 2, 11, and 12 under
35 U.S.C. § I02(a)(l) as anticipated by Quit It Now, and claims 3-5, 13, and
14 under 35 U.S.C. § 103 based on Quit It Now and Skelly. (See Final Act.
21, 26.) The March 3, 2017 Advisory Action, however, indicates the§ 103
rejection of claims 3 and 13 ( cancelled via the After-Final Amendment dated
February 28, 2017) "now appl[ies] to claims 1 and 11 [including the features
of claims 3 and 13] under the same rationale previously provided with
respect to claims 3 and 13." (Second Advisory Act. 2.) We further interpret
the current rejection of dependent claims 2 and 12 to be rejected under§ 103
over Quit It Now and Skelly, because claims 2 and 12 include the features of
their respective base claims 1 and 11 (rejected based on Quit It Now and
Skelly).
6 The Final Office Action rejected claims 6-8 and 15 under 35 U.S.C. § 103
based on Quit It Now and Akradi. (See Final Act. 30.) Based on the entry
of the After-Final Amendment dated February 28, 2017, we interpret the
current rejection of dependent claims 6-8 and 15 to be rejected under§ 103
over Quit It Now, Skelly, and Akradi because claims 6-8 and 15 include the
features of their respective base claims 1 and 11 (rejected based on Quit It
Now and Skelly).
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(5) Claims 9 and 17 stand rejected under 35 U.S.C. § 103 based on
Quit It Now, Day (US 2005/0240438 Al, published Oct. 27, 2005),
Abrahamson (US 8,639,604 Bl, issued Jan. 28, 2014), and Skelly. (Final
Act. 34--37 .)
(6) Claims 10 and 18 stand rejected under 35 U.S.C. § 103 based
on Quit It Now, Skelly, and Bost (US 2003/0149596 Al, published Aug. 7,
2003). (Final Act. 37-38; Second Advisory Act. 2.)7
(7) Claim 16 stands rejected under 35 U.S.C. § 103 based on Quit
It Now, Skelly, Akradi, and Hua et al. (US 2010/0173619 Al, published
July 8, 2010) ("Hua"). (Final Act. 38-39; Second Advisory Act. 2.)8
ANALYSIS
Status of the Claim Amendments Presented in the After-Final Amendment
filed February 28, 2017
After filing the Notice of Appeal on January 5, 2017, Appellant filed
an After-Final Amendment on February 28, 2017 ("Amendment F," as
7 The Final Office Action rejected claims 10 and 18 under 35 U.S.C. § 103
based on Quit It Now and Bost. (See Final Act. 37.) Based on the entry of
the After-Final Amendment dated February 28, 2017, we interpret the
current rejection of dependent claims 10 and 18 to be rejected under § 103
over Quit It Now, Skelly, and Bost because claims 10 and 18 include the
features of their respective base claims 1 and 11 (rejected based on Quit It
Now and Skelly).
8 The Final Office Action rejected claim 16 under 35 U.S.C. § 103 based on
Quit It Now, Akradi, and Hua. (See Final Act. 38.) Based on the entry of
the After-Final Amendment dated February 28, 2017, we interpret the
current rejection of dependent claim 16 to be rejected under § 103 over Quit
It Now, Skelly, Akradi, and Hua because claim 16 includes the features of
its base claim 11 (rejected based on Quit It Now and Skelly).
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styled by Appellant, see After-Final Amendment 1 ). Amendment F
amended independent claims 1 and 11 to incorporate all the limitations of
respective dependent claims 3 and 13, canceled claims 3 and 13, and
amended claims 4, 5, and 14 (which had depended from claims 3 and 13) to
depend from claims 1 and 11. (See Amendment F 2-5.)
The Examiner's Advisory Action dated March 3, 2017 ("Second
Advisory Act.") entered Amendment F, indicating that
The submitted amendments rewrite independent claims 1 and 11
to incorporate all of the subject matter of previously depending
claims 3 and 13, cancel previously depending claims 3 and 13,
and change the dependency of claims 4, 5, and 14 which had
depended from claims 3 and 13. Claims 1 and 11 were rejected
under 35 USC 102(a)(l) and 35 USC 101 as set out in the Final
Rejection mailed 10/5/2016. Claims 3 and 13 were rejected
under 35 USC 112(a) as failing to satisfy the written description
requirement, under 35 USC 101, and under 35 USC 103 as set
out in the Final Rejection mailed 10/5/2016. Based on the
incorporation of the subject matter of claims 3 and 13, each of
the previous grounds of rejection set forth with regard to claims
3 and 13 now apply to claims 1 and 11 under the same rationale
previously provided with respect to claims 3 and 13.
(Second Advisory Act. 1-2 (emphasis added).)
The Examiner's Answer, however, states "the amendments included
in Amendment F will not be entered" because "the amendment ... does not
remove issues for appeal." (Ans. 31.) This Answer statement, however, has
no legal effect, because (i) the Examiner has previously entered Amendment
F via the Advisory Action mailed March 3, 2017 as explained supra, and the
Answer cannot serve to remove an amendment the Examiner has previously
admitted, and (ii) Amendment F does in fact remove issues for appeal, as it
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obviates the basis of the§ 102(a)(l) rejection of claims 1 and 11 over Quit It
Now. 9
In conclusion, the record indicates that Appellant's Amendment F was
entered. Therefore, the claims before us on appeal are the claims in
Amendment F ( which are the claims presented by Appellant in the Appeal
Briefs Claim Appendix). Our analysis below therefore discusses claims 1
and 11 as amended by Amendment F. As discussed supra, we also consider
the§ 102(a)(l) rejection of claims 1 and 11 over Quit It Now to have been
effectively withdrawn such that it is not before us for review as part of the
instant appeal. The rejections before us for review as part of the instant
appeal are "each of the previous grounds of rejection set forth with regard to
claims 3 and 13 [(now cancelled via Amendment F)]," the rejections "now
apply[ing] to claims 1 and 11 under the same rationale previously provided
with respect to claims 3 and 13." (See Second Advisory Act. 2.)
Rejection of Claims 1, 4, 5, 9-11, 14, 17, and 18 under§ 112(a),
Written Description
The Examiner asserts there is no support in the Specification for the
limitation "calculating a cost of each health index parameter" where "the
health index parameter values includ[ e] values related to biometric data
associated with the user," as recited in claims 1 and 11. 10 (Final Act. 15;
Ans. 35.) Particularly, the Examiner finds the Specification's description of
9 The Examiner's Answer later concedes Amendment F was entered, when
referring to "previous claim 3 (now incorporated into claim 1)." (See Ans.
33.)
1 ° Claims 1 and 11 as amended by Amendment F, which incorporated the
features of claims 3 and 13 into claims 1 and 11, as discussed supra.
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estimating a food cost required to maintain a particular body mass index
(BMI) does not support the claimed calculating costs associated with
biometric parameters. (Final Act. 15-16.) The Examiner further asserts
there is no support in the Specification for limitations recited in dependent
claims 4, 5, 9, 10, 14, 17, and 18, including: (i) calculating a cost associated
with biometric data comprising diastolic blood pressure information, blood
glucose level information, body weight information, and total cholesterol
level information, as recited in claims 4 and 14 (Final Act. 16-17), (ii)
calculating a cost associated with health behavior data comprising stress
level information and physical activity level information, as recited in claims
5 and 14 (Final Act. 16-18), (iii) calculating a return on investment value
and a tax savings value as recited in claims 9 and 17 (Final Act. 18-20; Ans.
37), and (iv) calculating an estimated number of work days missed or a lost-
productivity dollar amount from the health index parameter values, as
recited in claims 10 and 18 (Final Act. 20-21; Ans. 38).
We do not agree with the Examiner. Rather, we agree with Appellant
the Specification supports the claimed "calculating a cost of each health
index parameter" where "the health index parameter values includ[ e] values
related to biometric data associated with the user" recited in claims 1 and 11.
(App. Br. 13-14.) For example, Figures 3 and 6 and paragraphs 24--25, 27,
59, and 61 of the Specification explicitly describe calculating cost of food
bought and consumed by a user of a particular body weight/BM! (biometric
parameters). (See Spec. ,r,r 24--25, 27, 59, 61, Figs. 3 and 6.) We concur
with Appellant that the Specification provides sufficient evidence to show
possession of calculating a cost of a health index parameter where "the
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health index parameter values includ[ e] values related to biometric data
associated with the user" as recited in claims 1 and 11.
We further agree with Appellant that the Specification supports the
claimed calculating a cost associated with biometric data comprising
diastolic blood pressure information, blood glucose level information, body
weight information, and total cholesterol level information recited in claims
4 and 14 (in view of their base claims 1 and 11). (App. Br. 14; Reply Br. 5.)
For example, Figures 6-8 and paragraphs 24, 35, 39, 57, and 60-61 of the
Specification explicitly describe a calculator for calculating costs associated
with an individual's diastolic blood pressure, blood glucose level, body
weight, and cholesterol level. (See Spec. ,r,r 24, 35, 39, 57, 60-61, Figs. 3
and 6.) We concur with Appellant that the Specification provides sufficient
evidence to show possession of cost calculations as required by claims 4 and
14.
The Specification also supports the claimed calculating a cost
associated with health behavior data comprising stress level information and
physical activity level information, as recited in claims 5 and 14 (in view of
their base claims 1 and 11). For example, Figures 6-8 and 10, and
paragraphs 24--25, 35, 52-54, 56-57, and 61 of the Specification explicitly
describe a calculator for calculating costs associated with an individual's
stress level and physical activity level. (See Spec. ,r,r 24--25, 35, 52-54, 56-
57, 61, Figs. 6-8 and 10.) We concur with Appellant that the Specification
provides sufficient evidence to show possession of cost calculations as
required by claims 5 and 14. (App. Br. 14; Reply Br. 5.)
We also agree with Appellant the Specification supports the claimed
calculating a return on investment value and a tax savings value as recited in
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claims 9 and 17. (App. Br. 14--16; Reply Br. 5-7.) For example, Figures 7
and 8 and paragraphs 28, 58, 61 of the Specification explicitly describe a
calculator for calculating a return on investment value and a tax savings
value. (See Spec. ,r,r 28, 58, 61, Figs. 7 and 8.) We concur with Appellant
that the Specification provides sufficient evidence to show possession of the
calculations recited in claims 9 and 17.
Additionally, the Specification supports the claimed calculating an
estimated number of work days missed or a lost-productivity dollar amount
from the health index parameter values, as recited in claims 10 and 18.
(App. Br. 17; Reply Br. 7-8.) For example, Figures 4, 7, and 8 and
paragraphs 24--25, 27, 50, 52-54, and 58---61 of the Specification explicitly
describe a calculator for estimating a number of work days missed or a lost-
productivity dollar amount from health index parameter values. (See Spec.
,r,r 24--25, 27, 50, 52-54, 58---61, Figs. 4, 7, and 8.) We concur with
Appellant that the Specification provides sufficient evidence to show
possession of the calculations as required by claims 10 and 18.
The Examiner's assertion that claim 4 (and similarly, claims 1, 5, 10,
11, 14, and 18) fails to comply with the written description requirement
under 35 U.S.C. § 112(a) because the Specification "does not actually
provide or describe the calculations used'' or "the actual function or steps
used to calculate costs associated with the biometric parameters," misapplies
the written description requirement of§ 112(a). (See Final Act. 16-17
( emphases added).) 11 Whether the Specification adequately teaches how to
11 We note, the Specification does disclose calculations and steps at least
for calculating a cost of biometric data parameters associated with a user as
required by claims 1 and 11 (see Spec. ,r,r 24--25, 27, 58-59, 61), calculating
a cost associated with body weight information as recited in claims 4 and 14
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make a claimed invention throughout its scope, without undue
experimentation, is an enablement issue under§ 112(a), which is separate
and distinct from the written description requirement of§ 112(a). See Ariad
Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en
bane).
In particular, compliance with the written description requirement
under§ 112(a) requires Appellant to "reasonably convey[] to those skilled in
the art that the inventor had possession of the claimed subject matter as of
the filing date." Ariad, 598 F.3d at 1351. That is, the disclosure must
convey with reasonable clarity to those skilled in the art that the inventor
was in possession of the invention. See Vas-Cath, Inc. v. Mahurkar, 935
F.2d 1555, 1563---64 (Fed. Cir. 1991). However, "the disclosure as originally
filed does not have to provide in haec verba support for the claimed subject
matter at issue." Purdue Pharma L.P. v. Paulding Inc., 230 F.3d 1320, 1323
(Fed. Cir. 2000). Additionally, what is conventional or well known to one of
ordinary skill in the art need not be disclosed in detail. See Hybritech Inc. v.
Monoclonal Antibodies, Inc., 802 F.2d 1367, 1384 (Fed. Cir. 1986); see
also Capon v. Eshhar, 418 F.3d 1349, 1358 (Fed. Cir. 2005) ("The 'written
description' requirement must be applied in the context of the particular
invention and the state of the knowledge .... As each field evolves, the
balance also evolves between what is known and what is added by each
inventive contribution."). As explained supra, we concur with Appellant
(see Spec. ,r,r 24--25, 59, 61), and calculating a return on investment value
and a tax savings value as recited in claims 9 and 17 (see Spec. ,r,r 28, 58,
61).
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that the Specification provides sufficient evidence to show possession of the
invention recited in claims 1, 4, 5, 9-11, 14, 17, and 18.
Accordingly, for the foregoing reasons, we do not sustain the
Examiner's rejection of claims 1, 4, 5, 9-11, 14, 17, and 18 under the written
description requirement of 35 U.S.C. § 112(a).
Rejection of Claims 1, 2, 4-12, and 14-18 under§ 101
The Examiner finds the claims are directed to an abstract idea because
they recite steps for calculating costs, aggregating the costs, and updating an
aggregate cost. (Final Act. 11-12.) The Examiner finds the claimed "steps
are similar to a mathematical relationship or formula in that costs of the
health index parameters are calculated using values for the parameters and
an aggregated cost is calculated from the costs, and both the costs and
aggregated cost are updated based on adjustments to the parameter values."
(Final Act. 12.) The Examiner further finds the claims do not amount to
significantly more than the abstract idea because they recite generic
computer components performing generic computer functions for data
gathering, processing, and displaying. (Final Act. 12-13; Ans. 34.) For
these reasons, the Examiner concludes the claims are directed to
unpatentable subject matter under § 101. Id.
To determine whether subject matter is patentable under § 101, the
Supreme Court has set forth a two part test "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. Pty. v.
CLS Banklnt'l, 134 S. Ct. 2347, 2355 (2014). The first step in the analysis
is to "determine whether the claims at issue are directed to one of those
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patent-ineligible concepts," such as an abstract idea. Id. ( citation omitted).
For computer-related technologies, "the first step in the Alice inquiry ...
asks whether the focus of the claims is on the specific asserted improvement
in computer capabilities" (which would be eligible subject matter) or instead
"on a process that qualifies as an 'abstract idea' for which computers are
invoked merely as a tool" (which would be ineligible subject matter).
Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36, 1338 (Fed. Cir.
2016) ( emphasis added). "If the claims are not directed to an abstract idea
[ or other patent-ineligible concept], the inquiry ends. If the claims are
'directed to' an abstract idea, then the inquiry proceeds to the second step of
the Alice framework." McRO, Inc. v. Bandai Namco Games Am. Inc., 837
F.3d 1299, 1312 (Fed. Cir. 2016).
The second step in the Alice framework is to consider the elements of
the claims "individually and 'as an ordered combination"' to determine
whether there are additional elements that "'transform the nature of the
claim' into a patent-eligible application." Alice, 134 S. Ct. at 2355 (citing
Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66,
78, 79 (2012)). 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. at 2355 ( citing Mayo,
566 U.S. at 72-73).
The USPTO recently published revised guidance on the application of
§ 101. See 2019 Revised Patent Subject Matter Eligibility Guidance, 84
Fed. Reg. 50 (Jan. 7, 2019) ("2019 Memorandum")). This new guidance is
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applied in this opinion. Under the 2019 Memorandum guidance, we first
look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, mental processes, or certain methods of
organizing human activity such as a fundamental economic practice or
managing personal behavior or relationships or interactions between
people); and
(2) additional elements that integrate the judicial exception into a
practical application (see Manual of Patent Examining Procedure ("MPEP")
§ 2106.05(a}-(c), (e}-(h)). 12 84 Fed. Reg. at 51-52, 55.
A claim that integrates a judicial exception into a practical application
applies, relies on, or uses the judicial exception in a manner that imposes a
meaningful limit on the judicial exception, such that the claim is more than a
drafting effort designed to monopolize the judicial exception. 84 Fed. Reg.
at 54. When the judicial exception is so integrated, then the claim is not
directed to a judicial exception and is patent-eligible under§ 101. 84 Fed.
Reg. at 54.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then evaluate
whether the claim provides an inventive concept. 84 Fed. Reg. at 56; Alice,
134 S. Ct. at 2350, 2355. For example, we look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.05(d)); or
12 The references to the MPEP are to the Ninth Edition, Revision 08-2017
(rev. Jan. 2018).
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(4) simply appends well-understood, routine, and conventional
activities previously known to the industry, specified at a high level of
generality, to the judicial exception. 84 Fed. Reg. at 56.
Here, the Examiner finds the steps of claims 1 and 11 "are similar to a
mathematical relationship or formula," and therefore the claims are directed
to an abstract idea. (Final Act. 11-12.) Appellant contends the claims are
not directed to an abstract idea because the claims solve problems arising in
a specific technical area-"the realm of health-cost education ... [by]
informing a patient about monetary savings and health benefits due to
education about patient-specific health parameters." (App. Br. 13.)
Appellant also argues the claims are patent-eligible because they improve
another technology or field by "providing the updated cost of each health
index parameter and the updated aggregate cost to the user in real time," and
"as the health index parameters are updated, a display upon which the user is
viewing the costs on a graphical user interface (GUI) is updated in real
time." (Reply Br. 3--4.)
Appellant's arguments are persuasive only in part. Particularly, we
agree with Appellant that independent claims 1 and 11 do not recite a
mathematical relationship, formula, or equation. (App. Br. 8, 11.) Under
the 2019 Memorandum guidance, however, claims 1 and 11 as a whole
recite a judicial exception of a method of organizing human activity. In
particular, the claims allow a user to determine how to change his or her
lifestyle in order to realize monetary savings, which is a method of
managing personal behavior by following rules or instructions. (See Spec.
if 2; Title.)
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Under the 2019 Memorandum guidance, we are further persuaded the
claims integrate the judicial exception into a practical application.
Particularly, claim 1 ( and similarly claim 11) recites a combination of
additional elements including receiving individual health index parameter
values, calculating a cost of each health index parameter and aggregating the
costs, providing the health index parameter costs and aggregate cost to the
user, updating the costs of each health index parameter and updating the
aggregate cost based on at least one adjusted health index parameter value,
and providing the updated health index parameter costs and updated
aggregate cost to the user in real time. The claim as a whole integrates the
method of organizing human activity into a practical application.
Specifically, the additional claim elements recite a specific
improvement over prior art systems by allowing a user "to adjust one or
more health index parameters to see [in real time] what the cost savings will
be if the user adjusts his health behavior ( e.g., by losing weight and reducing
BMI, quitting smoking, etc.)." (See Spec. ,r,r 39, 60-61.) The claimed
invention "provides a visual tool via which a user is encouraged to improve
his health, thereby improving his work performance and reducing his and/or
his employer's healthcare costs." (See Spec. ,r,r 39, 66.) The visual tool is a
health index calculator that can calculate a monetary reward in the form of
health cost savings for improving the user's health and habits, and calculate
an aggregate monetary amount that one or more bad health behaviors cost
the user per unit of time, thereby driving health behavior change in order to
decrease health care cost and produce a more healthy individual. (See Spec.
,r,r 2, 22, 26-28, 28, 54.) See Classen Immunotherapies, Inc. v. Biogen
IDEC, 659 F.3d 1057, 1060-61, 1066-68 (Fed. Cir. 2011) (claiming an
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immunization step that is a meaningful limitation beyond generally linking
the use of the judicial exception to a particular technological environment,
because the immunization step integrates an abstract idea of data comparison
into a specific process that lowers the risk that immunized patients will later
develop chronic immune-mediated diseases); MPEP § 2106.05( e ).
Additionally, claims 1 and 11 recite components and techniques that
generate useful new data (updated aggregate cost based on adjusted health
index parameters, provided to the user in real time) that incentivizes the user
to improve his health. See Electric Power Group, LLC v. Alstom, S.A., 830
F.3d 1350, 1355 (Fed. Cir. 2016) (providing that a "set of components or
methods, such as measurement devices or techniques, that would generate
new data" is "arguably inventive"); MPEP § 2106.05(a).
Because claims 1 and 11 integrate the judicial exception into a
practical application, we find claims 1 and 11, and their dependent claims 2,
4--10, 12, and 14--18 are not directed to a judicial exception (abstract idea)
and are patent-eligible under§ 101. For these reasons, we do not sustain the
Examiner's rejection of claims 1, 2, 4--12, and 14--18 as directed to non-
statutory subject matter under 35 U.S.C. § 101.
Rejection of Claims 1, 2, 4-12, and 14-18 under§ 103
With respect to claims 1 and 11, Appellant contends "Quit It Now
does not disclose health index parameters" or "anything related to health
index parameters"; rather, "Quit It Now discloses parameters related to
packs of cigarettes and alcoholic drinks." (Reply Br. 8.) Appellant also
argues Skelly does not disclose that "a cost of each individual parameter
( e.g., biometric data and health behavior data) is calculated/updated," as
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recited in claims 1 and 11. (Reply Br. 9; App. Br. 18-19.) 13 Rather, Skelly
merely discloses "providing a tabulation of insurance costs of a user's total
medical costs, and not for costs calculated exclusively based on individual
parameters such as blood pressure, glucose levels, or weight." (Reply Br. 9.)
We do not agree.
We agree with and adopt the Examiner's findings as our own (Ans.
39; Final Act. 22-23, 26-27.) Particularly, we agree with the Examiner that
Appellant is addressing the references separately rather than the combination
of teachings proposed by the Examiner. (Ans. 39.) The Examiner cited (i)
Quit It Now for teaching "calculating a cost of each health index parameter"
wherein "the health index parameter values include values related to health
behavior data associated with the user," and (ii) Skelly for teaching
"calculat[ing] costs for health index parameters related to biometric data
associated with a user," as required by claims 1 and 11. (Final Act. 23, 26-
27 (citing Quit It Now 1; Skelly ,r,r 10-11, 59---61).) We agree with the
Examiner that Quit It Now's calculator inputs numbers for cigarette packs
smoked and drinks consumed in a particular timeframe, which is
commensurate with receiving "health index parameter values" for "health
behavior data associated with the user" as claimed and described in
Appellant's Specification. 14 (Final Act. 26.) Quit It Now further teaches
13 In the Reply Brief, Appellant argues against claim 3 and 13 solely
because the Examiner's Answer stated "Amendment F [ which cancelled
claims 3 and 13] will not be entered." (See Ans. 31; Reply Br. 9.) As
discussed supra, however, Amendment F has in fact been entered by the
Examiner's Advisory Action dated March 3, 2017. Thus, our analysis
discusses claims 1 and 11 as amended by Amendment F to incorporate the
features of claims 3 and 13.
14 Appellant' Specification describes "[t]he health index parameter
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Application 13/895,727
calculating and updating a cost ( monthly expenditures for cigarettes and
drinks) of each health index parameter designating health behavior data, as
recited in claims 1 and 11. (Final Act. 23.)
Regarding Skelly, the Examiner finds it calculates and updates a cost
of a health index parameter having values (BMI, cholesterol, and blood
pressure values shown under Health Profile tab 120 in Skelly's Figure 5)
related to biometric data associated with the user, as recited in claims 1 and
11. (Final Act. 26; see Skelly ,r,r 59--61, 65-66, 73, Figs. 5, 7, 7 A-7B.) We
agree with the Examiner's findings because the skilled artisan would have
understood Skelly is calculating a cost for BMI, cholesterol, and blood
pressure levels, in order to estimate the user's future healthcare/health
insurance cost. (See Skelly Figs. 7, 7A-7B.) We also note claims 1 and 11
do not require a "health index parameter" to include only one ofBMI,
cholesterol, and blood pressure, and further do not require the calculated cost
of each health index parameter to be a cost "calculated exclusively based on
individual parameters such as blood pressure, glucose levels, or weight" as
Appellant asserts. (Reply Br. 9.) 15 The Examiner has also articulated
sufficient reasoning for combining the features of Quit It Now's and Skelly's
calculators, which Appellant does not address. (Final Act. 27 .)
For these reasons, we sustain the Examiner's rejection of independent
claims 1 and 11 under § 103 as unpatentable over Quit It Now and Skelly.
information includes ... health behavior data 26 (e.g., number of packs of
cigarettes smoked per day, alcoholic drinks consumed per day, etc.)." (See
Spec. ,r,r 23-24.)
15 Claim 1, for example, recites what the "health index parameter values"
are ("the health index parameter values including values related to biometric
data associated with the user and health behavior data associated with the
user"), but does not specify what "each health index parameter" is.
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Appellant contends the rejections of dependent claims 2, 4--10, 12,
and 14--18 are in error for the same reasons as claims 1 and 11. (App. Br.
18-25.) Appellant further recites the language of claims 2, 4--10, 12, and
14--18 and asserts the dependency from claims 1 and 11 "is not the sole
reason for the allowability" of the dependent claims. (App. Br. 19-25.)
Such arguments are not substantive arguments of Examiner error. (See
37 C.F.R. 4I.37(c)(l)(iv) (2013) ("A statement which merely points out
what a claim recites will not be considered an argument for separate
patentability of the claim.").) Thus, for the same reasons as claims 1 and 11,
we sustain the§ 103 rejections of dependent claims 2, 4--10, 12, and 14--18,
which Appellant does not argue with particularity.
DECISION
The Examiner's decision rejecting claims 1, 4, 5, 9-11, 14, 17, and 18
under 35 U.S.C. § 112(a) is reversed.
The Examiner's decision rejecting claims 1, 2, 4--12, and 14--18 under
35 U.S.C. § 101 is reversed.
The Examiner's decision rejecting claims 1, 2, 4--12, and 14--18 under
35 U.S.C. § 103 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
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