Ex Parte Newman et al

Patent Trial and Appeal Board

Feb 7, 2018

14448211 (P.T.A.B. Feb. 7, 2018)

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.
14/448,211 07/31/2014 Eric D. Newman 0068623-001282 1033
21839 7590 02/09/2018
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
EXAMINER
HOLCOMB, MARK
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
02/09/2018 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):
ADIPDOCl@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ERIC D. NEWMAN, JAMES B. JONES,
VIRGINIA R. LERCH, and JONATHAN BILLET
Appeal 2016-008251
Application 14/448,2111
Technology Center 3600
Before ALLEN R. MACDONALD, BETH Z. SHAW, and
AMBER L. HAGY, Administrative Patent Judges.
SHAW, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 1-3, 5-7, 17-19, and 21-23. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 The real party in interest is Geisinger Clinic. App. Br. 2.
Appeal 2016-008251
Application 14/448,211
INVENTION
The invention is for extracting item features or attributes and
automatically generating a corresponding label for purposes of refining
searches and for promoting product discovery via recommendations. Spec.
IV.
Claim 1 is representative and reproduced below:
1. A method for distributing patient data, comprising:
storing, in a patient database, a plurality of patient data
entries, wherein each patient data entry includes data related to a
patient including at least a patient identifier and a plurality of
patient data points, each patient data point in the plurality of
patient data points being associated with an access control;
storing, in a user database, a plurality of user data entries,
wherein each user data entry includes data related to a user
including at least a user identifier, authentication information,
and access control information;
receiving, by a receiving device, at least questionnaire
answers from a first input device, wherein the questionnaire
answers are related to at least medical symptoms or history
associated with a patient and a specific patient identifier
associated with the patient;
updating, in the patient database, the plurality of patient
data points included in a specific patient data entry, where the
included patient identifier corresponds to the specific patient
identifier, based on the received questionnaire answers;
transmitting, by a transmitting device, a notification to a
second input device indicating that the specific patient data entry
has been updated in the patient database based on the received
questionnaire answers;
receiving, by the receiving device, a request for patient
data from the second input device, wherein the request for patient
data includes the specific patient identifier, a specific user
identifier, and supplied authentication information; and
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transmitting, by the transmitting device, a subset of the
plurality of patient data points included in the specific patient
data entrl to the second input device based on the access control
associated with each patient data point in the subset of the patient
data points and the access control information included in a
specific user data entry, where the user identifier included in the
specific user data entry corresponds to the specific user identifier,
if the supplied authentication information corresponds to the
authentication information included in the specific user data
entry.
REJECTION
The Examiner rejected claims 1-3, 5-7, 17-19, and 21-23 under 35
U.S.C. § 101. Final Act. 3.
The Examiner rejected claims 1, 2, 5-7, 17, 18, and 21-23 under
35 U.S.C. § 103 as being unpatentable as obvious over Hasan (US 7.707,047
B2) and Greene (US 2005/0251416 Al). Final Act. 5.
The Examiner rejected claims 3 and 19 under 35 U.S.C. § 103 as
being unpatentable as obvious over Hasan, Greene, and Official Notice.
Final Act. 9.
ANALYSIS
Section 101 Rejection
The Examiner determines claims 1-3, 5-7, 17-19, and 21-23 are
directed to the abstract idea of gathering, storing, and distributing patient
data. Ans. 13. The Examiner also determines additional elements recited in
these claims do not amount to significantly more than the abstract idea itself.
Id. at 13-14. According to the Examiner, the claims require no more than
generic computer functions routinely used in computer applications such as
storing, receiving, updating, and transmitting data. Id. at 14.
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Appellants present several arguments against the 35 U.S.C. § 101
rejection. App. Br. 6-9; Reply Br. 3-12. Appellants contend the claims are
not directed to an abstract idea and that the claims amount to significantly
more than an abstract idea. Id.
We do not find Appellants’ arguments persuasive. Instead, we
conclude the Examiner has provided a sufficient response to Appellants’
arguments supported by a preponderance of evidence. Ans. 13-16; see also
Final Act. 6-9. As such, we agree with and adopt the Examiner’s
determinations and explanations provided therein. Id.
The Supreme Court has long held that “[ljaws of nature, natural
phenomena, and abstract ideas are not patentable.” Alice Corp. Pty. Ltd. v.
CLS Bank Inti, 134 S. Ct. 2347, 2354 (2014) (quoting Assoc, for Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)). The
‘“abstract ideas’ category embodies ‘the longstanding rule that ‘[a]n idea of
itself, is not patentable.’” Id. at 2355 (quoting Gottschalkv. Benson, 409
U.S. 63, 67 (1972)).
In Alice, the Supreme Court sets forth an analytical “framework for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts.” Id. at 2355 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-78 (2012)). The first step in the analysis is to
“determine whether the claims at issue are directed to one of those patent-
ineligible concepts,” such as an abstract idea. Id.
If the claims are directed to a patent-ineligible concept, the second
step in the analysis is to consider the elements of the claims “individually
and ‘as an ordered combination’” to determine whether there are additional
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elements that ‘“transform the nature of the claim’ into a patent-eligible
application.” Id. (quoting Mayo, 566 U.S. at 77-79). 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. (alteration in original) (quoting Mayo, 566 U.S. at 77-
78). The prohibition against patenting an abstract idea “cannot be
circumvented by attempting to limit the use of the formula to a particular
technological environment’ or adding ‘insignificant postsolution activity.’”
Bilskiv. Kappos, 561 U.S. 593, 610-11 (2010).
Addressing the first step of the Alice inquiry, we agree that
Appellants’ claims are directed to an abstract idea, as explained by the
Examiner. Ans. 13. All the steps recited in Appellants’ claims are abstract
processes of storing, receiving, updating, and transmitting data. Cf. Elec.
Power Grp. LLCv. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)
(“collecting, analyzing, and displaying certain results of the collection and
analysis” is abstract); In re Salwan, Appeal No. 2016-2079, 2017 WF
957239 at *3 (Fed. Cir. Mar. 13, 2017) (affirming the rejection under § 101
of claims directed to “storing, communicating, transferring, and reporting
patient health information,” noting that “while these concepts may be
directed to practical concepts, they are fundamental economic and
conventional business practices”); Cyberfone Systems, LLC v. CNN
Interactive Grp, Inc., 558 F. App’x 988, 992 (Fed. Cir. 2014)
(nonprecedential) (“using categories to organize, store, and transmit
information is well-established”); Apple, Inc. v. Ameranth, 842 F.3d 1229
(Fed. Cir. 2016) (“ability to generate menus with certain features” held
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abstract). Additionally, the claims are not directed to a specific
improvement in the way computers operate. Cf. Enflsh, LLC v. Microsoft
Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016).
Turning to the second step of the Alice inquiry, the limitations in
Appellants’ claims do not add anything “significantly more” to transform
into a patent-eligible application the abstract concept of storing, updating,
and transmitting data. Ans. 14-16; see also Alice, 134 S. Ct. at 2357.
We agree with the Examiner that the specific details of the claims are
not “significantly more” than the abstract idea. Ans. 14. These are ordinary
steps in data analysis and are recited in an ordinary order. Limiting an
abstract concept of generating and organizing data to a general purpose
computer having generic components, such as the “receiving device” recited
in Appellants’ claims, does not make the abstract concept patent-eligible
under 35 U.S.C. § 101.
As recognized by the Supreme Court, “the mere recitation of a generic
computer cannot transform a patent-ineligible abstract idea into a patent-
eligible invention.” Alice, 134 S. Ct. at 2358; see id. at 2359 (concluding
claims “simply instruct[ing] the practitioner to implement the abstract idea
of intermediated settlement on a generic computer” are not patent eligible).
Although Appellants argue the claims “are directed to a technical
solution for distributing patient data related to an electronic health record
that is updated via patient questionnaire answers” and but for “the existence
of computers and electronic health records, there would be no ability to
achieve the claimed technological solution” (Reply. Br. 7), we disagree.
Merely using a computer to perform more efficiently what could otherwise
be accomplished manually does not confer patent-eligibility.
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A s our reviewing court has held, “the use of the Internet is not
sufficient to save otherwise abstract claims from ineligibility under § 101.
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715-16 (claims merely
reciting an abstract idea of using advertising as currency as applied to
particular technological environment of the Internet are not patent eligible;
“use of the Internet does not transform an otherwise abstract idea into
patent-eligible subject matter”); see also Accenture Global Servs., GmbHv.
Guidewire Software, Inc., 728 F.3d 1336, 1344 45 (Fed. Cir. 2013) (claims
reciting “generalized software components arranged to implement an
abstract concept [of generating insurance-policy-related tasks based on rules
to be completed upon the occurrence of an event] on a computer” are not
patent eligible); Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333-34 (Fed.
Cir. 2012) (“[sjimply adding a ‘computer aided’ limitation to a claim
covering an abstract concept, without more, is insufficient to render [a]
claim patent eligible”).
Appellants argue that their claims are rooted in computer technology.
App. Br. 7 (citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245,
1258 (2014)). The claimed invention in DDR Holdings did not merely use
the Internet but rather changed how interactions on the Internet operated. In
contrast, Appellants’ claims are not directed to a problem rooted in computer
technology, as outlined in DDR Holdings. Reading the present claim
limitations alone and as an ordered combination, we conclude Appellants’
claimed invention corresponds to a method of updating patient data based on
a patient questionnaire.
Because Appellants’ claims are directed to a patent-ineligible abstract
concept and do not recite something “significantly more” under the second
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prong of the Alice analysis, we sustain the Examiner’s rejection of these
claims under 35 U.S.C. § 101 as being directed to patent-ineligible subject
matter in light of Alice and its progeny.
Section 103
Appellants argue the Examiner erred in rejecting the pending claims
under as being unpatentable as obvious over Hasan and Green. App. Br. 9-
11. In particular, Appellants argue Greene fails to teach “transmitting, by a
transmitting device, a notification to a second input device indicating that
the specific patient data entry has been updated in the patient database based
on the received questionnaire answers.” App. Br. 9-10. Appellants argue
that Greene discloses that the patient that is completing the lx (information
therapy) sends a notification to a health plan or employer while the claims
require that questionnaire answers are received from a patient via the first
input device, that patient’s data is updated using the answers, and then a
notification is sent to a second input device indicating that the patient data
entry has been updated. Id.
The Examiner explains that the claims merely require a notification to
be transmitted, but do not indicate that the patient cannot click a link. Ans.
17. Moreover, as the Examiner points out, the claims merely require a
transmitting device to send the notification, and do not indicate that
transmitting device is distinct from a device used by the patient. Id. at 18.
We agree that Appellant’s arguments are not commensurate in scope with
the claims for the reasons explained by the Examiner.
Appellants also argue Greene does not teach the specific notification
of the claims. App. Br. 11; Reply Br. 13. In particular, Appellants argue
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Greene’s paragraph 47 only indicates the patient’s understanding, and not
that the patient’s data was updated. Reply Br. 13.
Section 103 forbids issuance of a patent when “the
differences between the subject matter sought to be patented and
the prior art are such that the subject matter as a whole would
have been obvious at the time the invention was made to a person
having ordinary skill in the art to which said subject matter
pertains.”
KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).
The Examiner finds that “transmission of completed patient answers
would also comprise a notification that those answers have been completed
and updated.” Final Act. 7. Greene explains that “upon completion of the lx
and indication of adherence and understanding, the patient is provided with
means for notifying the health care network of the receipt and review of the
lx material.” Greene ^ 47. Greene teaches that “the patient’s responses are
monitored, recorded and scored by the website. . . . [A] website that
monitors, records and stores data would inherently require use of an element
to record data, that is, a database.” Ans. 18. Moreover, Greene teaches not
just notification of understanding, but also that the lx program was
completed. Greene ^ 47 (“notification of completion”); Fig. 4(18)
(“Program’s website offers to notify the employer/insurer of the patient’s
completion of the lx therapy. Website also provides notification of
transmitting answers to patient’s physician.”). Thus, we agree with the
Examiner that the notification of claim 1 would have been obvious at the
time the invention was made to one skilled in the art based on the
combination of Hasan and Greene.
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Accordingly, we sustain the rejection of claim 1 under 35 U.S.C.
§103, and of claims 2,-3, 5-7, 17-19, and 21-23, for which Appellants
present no additional arguments.
CONCLUSIONS
We affirm the rejection of claims 1-3, 5-7, 17-19, and 21-23 under
35 U.S.C. § 101.
We affirm the rejection of claims 1-3, 5-7, 17-19, and 21-23under
35 U.S.C. § 103.
DECISION
The Examiner’s decision rejecting claims 1-3, 5-7, 17-19, and 21-23
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)(1).
AFFIRMED
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