Ex Parte Nihal

Patent Trials and Appeals Board

Jun 25, 2019

14008063 - (D) (P.T.A.B. Jun. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
14/008,063
7590
Perwiaz Nihal
FILING DATE
09/27/2013
06/25/2019
439 Upper Jaffrey Road
Dublin, NH 03444
FIRST NAMED INVENTOR
Perwaiz Nihal
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.
NIHPllOlPPPCPU 4851
EXAMINER
ULLAH,ARIF
ART UNIT PAPER NUMBER
3683
MAIL DATE DELIVERY MODE
06/25/2019 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 PERW AIZ NIHAL
Appeal2018-002774
Application 14/008,063
Technology Center 3600
Before JOSEPH L. DIXON, JAMES W. DEJMEK, and
STEPHEN E. BELISLE, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2018-002774
Application 14/008,063
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § I34(a) from a rejection of
claims 1, 3, 5-11, and 13-25. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
The claims are directed to systems and methods for providing a
service quality measure receiving the service event attribute prior to delivery
of the service event. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A processor based method of determining a service quality
category measure, the method comprising:
receiving a service event attribute from a service recipient
reflecting a service event;
receiving the service event attribute prior to delivery of the
service event to the service recipient; and
automatically correlating with a processor the service
event attribute with a service quality category to determine a
service quality category measure.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Wennberg
Manning et al.
Torress
Qadri
US 2007 /0078680 Al
US 2008/0059230 Al
US 2010/0235228 Al
US 2012/0084101 Al
Apr. 5, 2007
Mar. 6, 2008
Sept. 16, 2010
Apr. 5, 2012
1 Appellant's indicates that the inventor, Perwaiz Nihal, is the real party in
interest.
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Dobell US 2013/0204675 Al Aug. 8, 2013
HCAHPS Survey: Patients' Perspective of Care to NAPH [National
Association of Public Hospitals and Health Systems] Research Brief October
2008 pp 1-8 (hereinafter "NAPH").
REJECTIONS
The Examiner made the following rejections:
Claims 1, 3, 5-11, and 13-25 stand rejected under 35 U.S.C. § 101
because the claimed invention is not directed to patent-eligible subject
matter.
Claims 1, 10, 13, 14, 19, and 22 stand rejected under pre-AIA
35 U.S.C. § I03(a) as being unpatentable over Manning in view of Qadri.
Claims 5, 6, 15, 16, and 20 stand rejected under pre-AIA 35 U.S.C.
§ I03(a) as being unpatentable Manning in view of Qadri, in further view of
NAPH.
Claims 3, 17, 18, and 21 stand rejected under pre-AIA 35 U.S.C.
§ I03(a) as being unpatentable over Manning in view of Qadri in further
view of Torress.
Claim 25 stands rejected under pre-AIA 35 U.S.C. § I03(a) as being
unpatentable over Manning in view of Qadri in further view of Do bell.
Claim 7 stands rejected under pre-AIA 35 U.S.C. § I03(a) as being
unpatentable over Manning in view of Qadri in further view of Wennberg
and in further view ofNAPH.
Claims 11, 23, and 24 stand rejected under pre-AIA 35 U.S.C.
§ I03(a) as being unpatentable over Manning in view of Qadri in further
view of Torress and in further view ofNAPH.
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Claims 8 and 9 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Manning in view of Qadri in further view of
Wennberg in even further view ofNAPH, and in even further view of
Torress.
ANALYSIS
35 U.S.C. § 101
An invention is patent eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 70 (2012) (brackets in original) (citing Diamond v. Diehr,
450 U.S. 175, 185 (1981)).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Alice Corp. v. CLS Banklnt'l, 573 U.S. 208, 217-18 (2014)
(citing Mayo, 566 U.S. at 75-77). In accordance with that framework, we
first determine what concept the claim is "directed to." See Alice, 573 U.S.
at 218-19 ("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."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
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concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 (internal quotation marks
omitted). "A claim that recites an abstract idea must include 'additional
features' to ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."' Id. ( quoting Mayo, 566 U.S. at 77).
"[M]erely requir[ing] generic computer implementation[] fail[ s] to transform
that abstract idea into a patent-eligible invention." Id.
The PTO recently published revised guidance on the application of
§ 101. USPTO's January 7, 2019 Memorandum, 84 Fed. Reg. 50, 2019
Revised Patent Subject Matter Eligibility Guidance ("Revised Guidance").
Under that guidance, we first look to whether the claim recites:
( 1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity, such as a fundamental economic practice,
or mental processes) ("Prong One"); and
(2) additional elements that integrate the judicial exception into
a practical application ("Prong Two") (see MPEP § 2106.05(a}-(c),
(e}-(h)) (9th ed. 2018).
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then 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
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Revised Guidance.
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With respect to independent claims 1, 13, and 19, Appellant presents
arguments to independent claim 1, and Appellant does not set forth separate
arguments for patentability of independent claims 13 and 19. As a result, we
select independent claim 1 as the representative claim for the group and
address Appellant's arguments thereto. See 37 C.F.R. § 4I.37(c)(l)(iv)
(2016).
Revised Guidance Step 1
Step 1 of the Revised Guidance asks whether the claimed subject
matter falls within the four statutory categories of patentable subject matter
identified by 35 U.S.C. § 101: process, machine, manufacture, or
composition of matter. See Revised Guidance. Claim 1 recites "processor
based method of determining a service quality category measure" and
Appellant does not argue the Examiner erred in concluding claim 1 falls
within the four statutory categories of patentable subject matter. (App.
Br. 12). We agree with the Examiner's conclusion because claim 1 falls
within the process category.
Revised Guidance Step 2A(i)
Under Step 2A(i) of the Revised Guidance, we determine whether the
claims recite any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing human
activity such as a fundamental economic practice, or mental processes). See
Revised Guidance.
The Examiner maintains that independent claim 1 recites "an idea of
itself in that the limitations are directed to an uninstantiated concept, plan or
scheme, as well as a mental process." (Final Act. 4; Ans. 5).
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We refine the Examiner's determination of the abstract idea to
identify that claim 1 recites the following limitations in the processor-based
method of determining a service quality category measure, the method
compnsmg:
receivmg a service event attribute from a service recipient
reflecting a service event;
receiving the service event attribute prior to delivery of the
service event to the service recipient; and
automatically correlating with a processor the service event
attribute with a service quality category to determine a service
quality category measure.
(Emphasis added). This limitation, under its broadest reasonable
interpretation, recites a processor-based method of determining a service
quality category measure, which is merely personal behavior or relationships
or interactions between people using available information.
We additionally note that the preamble of independent claim 1 recites
by "a processor based method of determining a service quality category
measure," but the claimed method provides no details of the "determining a
service quality category measure" beyond reciting "a processor." We find
the two "receiving" steps to be insignificant extra-solution activity. The
court also guides that data gathering is a classic example of insignificant
extra-solution activity. See, e.g., In re Bilski, 545 F.3d 943, 963 (Fed. Cir.
2008) (en bane), aff'd sub nom, Bilski v. Kappas, 561 U.S. 593 (2010).
Accordingly, we conclude the claims recite a method of managing
personal behavior or relationships or interactions between people, which is
one of the certain methods of human activities identified in the Revised
Guidance, and thus an abstract idea. Revised Guidance 52.
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Revised Guidance Step 2A(ii)
Under the Revised Guidance, if a claim recites a judicial exception, in
Step 2A(ii) we determine whether the recited judicial exception is integrated
into a practical application of that exception by (a) identifying whether there
are any additional elements recited in the claim beyond the judicial
exception( s ); and (b) evaluating those additional elements individually and
in combination to determine whether they integrate the exception into a
practical application. If the recited judicial exception is integrated into a
practical application, the claim is not directed to the judicial exception.
Here, claim 1 recites the additional elements/steps of "a processor,"
"prior to delivery of the service event to the service recipient," and
"receiving." We find that Appellant did not dispute any of these additional
limitations in the claimed invention with respect to the abstract idea, and the
Examiner made specific findings and conclusions in the Examiner's Answer
with regards to these additional elements as they relate to Step 2A of the
Alice analysis. (Ans. 5-7). Considering the claim as a whole, interaction of
all the steps using the available data at an unspecified location "with a
processor" does not apply or use the abstract idea in a meaningful way such
that the claim as a whole is more than a drafting effort designed to
monopolize the exception.
Claim 1 recites various limitations consistent with this
characterization. Additionally, the Specification further supports this
characterization:
Conventional technologies for enabling service providers
to generate self assessment measures suffer from a variety of
deficiencies. In particular, conventional technologies for
generating self assessment measures are limited in that
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conventional technologies do not generate self assessment
measures that are based on the industry or government standards
that are ultimately used to assess the service providers.
Conventional technologies do not generate predicted assessment
measures that can be used to improve the services while the
services are being provided in an effort to positively impact the
future results of the industry or government based assessments.
Conventional technologies do not provide near real time
predicted assessments on an ongoing basis that provide service
providers with trending information associated with the services
provided.
(Spec. ,r 6). We note that the language of independent claim 1 does not set
forth a "self assessment" or "industry or government based assessments."
The Specification also states:
In other words, the service quality category measure
providing process receives a services event attribute reflecting a
service event, such as a service request. The service request may
be received from a service recipient receiving services provided
by a service provider. In an example embodiment, the service
quality category measure providing process automatically
correlates the service event attribute with a service quality
category to determine a service quality category measure. In an
example embodiment, the service quality category measure
providing process then provides the service quality category
measure to a graphic interface, for example, to report the service
quality category measure to a service provider. This may give
the service provider important service assessment information in
near real time, allowing the service provider the opportunity to
improve the services that are provided to service recipients. By
providing assessment information on an ongoing basis, the
service provider can determine how the assessment is trending,
for example, with respect to time.
(Spec. ,r 8) ( emphasis added).
The Specification further discloses multiple components used in a
system, and they may be in a single unit or multiple functional units, in one
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system or distributed across a network and "may be realized in hardware,
software, or a combination of hardware and software. Any kind of
computer/server system(s), or other apparatus adapted for carrying out the
methods described herein, is suited." (Spec. ,r 120; see generally Spec.
,r,r 122-130; Fig. 9). From the high level of description in the Specification,
we find Appellant's Specification merely identifies "a processor based
method of determining a service quality category measure," as a generic
computer processor that performs the function of automatically correlating
with a processor the service event attribute with a service quality category to
determine a service quality category measure without any substantive details
thereof.
Additionally, the timing of the receiving step with respect to the
unclaimed step regarding a service event does not apply or use the abstract
idea in a meaningful way such that the claim as a whole is more than a
drafting effort designed to monopolize the exception. Thus, we determine
that the abstract idea is not integrated into a practical application.
Revised Guidance Step 2B
Under the Revised Guidance, only if a claim ( 1) recites a judicial
exception and (2) does not integrate that exception into a practical
application, do we then 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
§ 2106.0S(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high level of
generality, to the judicial exception.
Here, the Examiner maintains:
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The method steps relied upon by the Applicant as recited does
not improve upon another technology nor do they improve the
functioning of the computer itself. Further, the claims do not
mention to any use of a specialized computer and/or processor.
Rather, the Applicant seems to use of general purpose computers
and the internet to gather information. The abstract idea is not
particular to a technological environment, but is merely being
applied to a computer realm. The process of gathering and
correlating information regarding services provided can be done
without a computer, and thus the claims are not "necessarily
rooted", but rather they are utilizing computer technology to
perform the abstract idea.
(Final Act. 6-7) ( emphasis omitted). The Examiner further identifies
paragraph 120 of Appellant's Specification which discloses "[a]ny kind of
computer/server system(s), or other apparatus adapted for carrying out the
methods described herein, is suited. A typical combination of hardware and
software could be a general-purpose computer system" and maintains that
the generic computer components are insufficient to be "significantly more"
than the abstract idea and "[t]he field of quality service measuring does not
constitute an improvement to a technology." (Ans. 9-11) (emphasis
omitted). We agree with the Examiner that the claim simply appends well-
understood, routine, conventional activities previously known to the
industry, specified at a high level of generality and is insufficient to
constitute "significantly more" than the abstract idea and independent
claim 1 is directed to an abstract idea.
Appellant does not set forth separate arguments for patent eligibility
for independent claims 13 and 19 and these claims fall with representative
independent claim 1. Appellant also does not set forth separate arguments
for patent eligibility of the dependent claims 3, 5-7, 9-11, 14--18, 20-22,
and 25 Therefore, these claims will fall with representative independent
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claim 1. Additionally, Appellant did not file a reply brief to further respond
to the examiner's clarifications.
Appellant's Arguments
With respect to representative independent claim 1, Appellant
provides limited arguments and contends the Examiner erred because the
Examiner improperly applies Step 2A of the 2014, 2015, and 2016
Guidances on Patent Subject Matter Eligibility, all collectively (the "IEG"),
and fails to make a prima facie case. (App. Br. 12). Appellant further
contends that the Examiner misapplies Step 2B of the IEG and the
Examiner's overgeneralizations at least ignore limitations directed to the
timing of receiving attributes such as "receiving the service event attribute
prior to delivery of the service event to the service recipient" ( claim 1 ), "a
service request attribute of a service request for a service event to be
performed" ( claim 13) and "the service request comprising a request for a
service event to be performed" (claim 19). (App. Br. 14).
Appellant's arguments have been addressed above applying the
Revised Guidance.
Claims 23 and 24
With respect to claims 23 and 24, Appellant again contends that the
Final Action failed to adequately consider or address the claim limitations
and a prima facie case of ineligibility was not established. (App. Br. 15-17).
Appellant further contends with respect to claims 23 and 24 that the
Examiner's rejection under 35 U.S.C. § 101 fails to satisfy the requirement
for a prima facie case of rejection by failing to even consider an analysis of
these claims under Step 2B. (App. Br. 15). Appellant further argues "that
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all of the limitation[ s] of these claims were generalized in the Final Action to
be included in an 'an idea of itself' under a Step 2A analysis. The Final
Action at paras. 20 and 41-45 similarly rejects claims 23 and 24 with a Step
2A conclusion that all of the limitations simply narrow the 'idea of itself.'"
(App. Br. 15). Appellant further contends that the Examiner has incorrectly
based the rejection on an improper overgeneralization that all of the claim
limitations are absorbed in the "idea of itself." (App. Br. 15). Appellant
further contends that Appellant submits that at least these two claims as a
whole recite methods of determining values for variables that add
"significantly more" than the abstract ideas. (App. Br. 16).
We find Appellant's argument to be unavailing because Appellant
does not support this contention with any specific argument detailing
support in the claim language for the contention.
Moreover, Appellant argues:
Claims 23 and 24 recite a service quality category correlating to
a Hospital Consumer Assessment of Healthcare Providers and
Systems (HCAHPS) measure and provides a way to
parallel/predict HCAHPS measures while a patient is in the
healthcare setting. This solution is very helpful because
HCAHPS measures are not to be taken during in the healthcare
setting (Spec. at least at paras. [0074] and [0139]). Therefore,
this claim solves the technical problem of how to predict or
parallel the HCAHPS measure with a service request made for a
service event yet to be performed.
(App. Br. 16-17).
We disagree with Appellant's general argument and find that claims
23 and 24 further detail the field of use to a patient in a health care facility
healthcare data and recite the use of the known Hospital Consumer
Assessment of Healthcare Providers and Systems (HCAHPS) measures and
further details the abstract idea of automatically correlating ( addressed
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above) to a sum of plural correlated values and a subsequent comparison of
the service quality category measure to a post rendering service of service
quality category measure. Moreover, we find Appellant's arguments
unavailing, and we find paragraphs 74 and 139 of the Specification do not
further limit the claimed system to "predicting" or "parallel" the HCAHPS
measures and do not limit the claimed invention to HCAHPS measures that
are not to be taken in the healthcare setting.
Appellant further argues that the "prior to a rendering of the service"
limitation confines the abstract idea to a particular, practical application
because the combination of limitations is not well understood, routine or
conventional activity. (App. Br. 18). Appellant contends that the claimed
invention is like McRO, Inc. v. Bandai Namco Games America Inc., 837
F.3d 1299 (Fed. Cir. 2016) (McRO), in that the claims do not "simply use a
computer as a tool to automate conventional activity" because "[b Jase claim
1 recites a service quality category correlating to a Hospital Consumer
Assessment of Healthcare Providers and Systems (HCAHPS) measure and
provides a way to parallel/predict HCAHPS measures while a patient is in
the healthcare setting." (App. Br. 18).
We disagree with Appellant because Appellant's argument fails
because it is not commensurate with the scope of the claim. See In re Self,
671 F.2d 1344, 1348 (CCPA 1982) ("[A]ppellant's arguments fail from the
outset because ... they are not based on limitations appearing in the
claims."); In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998) ("[The]
proffered facts . . . are not commensurate with the claim scope and are
therefore unpersuasive.").
Appellant further contends the claimed invention overcomes
"a problem specifically arising from the computer based technology of
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measuring health care facility service quality." (App. Br. 19). We disagree
with Appellant and find the invention is directed to the information
regarding surveying patients in healthcare facilities. Therefore, Appellant's
argument is unpersuasive and the invention is not directed to "more than
routine and conventional limitations of computers." (App. Br. 19). As a
result, we find the claimed limitations to be directed to use of available
information in the same manner as certain methods of organizing human
activity such as managing personal behavior in combination with
mathematical concepts, and Appellant's arguments do not show dependent
claims 23 and 24 are directed to patent-eligible subject matter.
Claim 8
With respect to claim 8, Appellant contends that the additional
elements of updating a model provide "significantly more" both individually
and as an order combination to improve technology. (App. Br. 20-21 ).
The Examiner maintains that:
[t]he limitation of updating the predicting model based on the
actual category measure and the predicted measure category
difference only further narrows the abstract idea ( organizing
information through mathematical correlations), and . . . The
additional elements (updating a model) fail to provide
"significantly more" both individually and in an ordered
combination, do not provide an improvement to the technology,
and merely add an additional mathematical step, thus narrowing
the abstract idea.
(Ans. 19).
We agree with the Examiner that the claimed invention further limits
the abstract idea, and we note that the claim language and the Specification
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do not specifically limit the details of the model. (See generally Spec. ,r,r 76,
77, 89, 90 ("The predicting model may be any type of predictive model, such
as a statistical model, to predict or extrapolate a measure based on past
measures. For illustration only, and not for limitation, suitable statistical
models include linear regression analysis or moving averages of selected
measures.") (Emphases added)).
In response, we conclude the claimed invention contains plural
abstract ideas and merely combining several abstract ideas does not render
the combination any less abstract. RecogniCorp, LLC v. Nintendo Co.,
855 F.3d 1322, 1327 (Fed. Cir. 2017) ("Adding one abstract idea ... to
another abstract idea ... does not render the claim non-abstract."); see also
FairWarning IP, LLC v. Iatric Systems, 839 F.3d 1089, 1093-94
( determining the pending claims were directed to a combination of abstract
ideas).
As a result, we find the claimed limitations to be directed to use of
available information in the same manner as certain methods of organizing
human activity such as managing personal behavior in combination with
mathematical concepts, and Appellant's arguments do not show dependent
claim 8 is directed to patent-eligible subject matter.
35 U.S.C. § 103(a)
Claim 1
With respect to claims 1, 13, and 19, Appellant relies upon the
arguments advanced with respect to independent claim 1. (App. Br. 22).
Therefore, we select independent claim 1 as the representative claim and
will address Appellant's arguments thereto. See 37 C.F.R.
§ 4I.37(c)(l)(iv).
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With respect to representative independent claim 1, Appellant
contends "the limitations of claim 1 should not be rejected by a combination
including Manning and Qadri because there is no teaching, suggestion, or
motivation in the references to modify or combine the references." (App.
Br. 21 ). Appellant submits it is not obvious to "determine a service quality
measure" from a "service attribute reflecting a service event" received "prior
to delivery of the service event" as claimed. (Id.)
Appellant disagrees with the Examiner's motivation for the
combination of the Manning and Qadri references. (App. Br. 21-22).
Appellant contends the Manning reference does not teach evaluating
services prior to the delivery of services as claimed, and the Qadri reference
teaches populating medical records, but does not address service quality.
Appellant further contends the information collected by Qadri is very
different than the information collected by Manning or the information
claimed. (App. Br. 22).
Appellant further contends that:
nowhere does Oadri disclose collecting information to be
collected before the delivery of a service to be used as a quality
measure. Neither the references nor the proposed combination
include a teaching, suggestion or motivation to provide an ability
to receive service event attributes for determining a service
quality measure well before current methods, or well before
HCAHPS scores can be determined.
(App. Br. 21-22). We find Appellant's arguments are not persuasive
because the arguments not commensurate in the scope with the express
language of independent claim 1. Appellant further contends that:
even if the references can be combined, the limitations of claim
1 should not be rejected by a combination including Manning
because the proposed modification to Manning changes the
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reference's principle operation. Incorporating the features of
Qadri in Manning would require a substantial reconstruction and
redesign of the elements shown in Manning as well as a change
in the basic principle under which Manning was designed to
operate. Manning is clearly intended to address gathering
information after services are rendered.
(App. Br. 22).
We find that Appellant's argument generally relies upon that "service
event attribute from a service recipient reflecting a service event" is received
"prior to delivery of the service event to the service recipient" (App. Br. 21-
22), which would necessarily exist because the service request must always
come before delivery of the service event. (The request for a specific
service must come before the delivery of the requested specific service.)
We agree with the Examiner that Appellant's arguments address the
references individually rather than the combination as proffered by the
Examiner in the grounds of the rejection, and we further agree with the
Examiner that the Manning and Qadri references are analogous art.
(Ans. 20-22; Final Act. 31-38).
We find that Appellant's argument is not commensurate with the express
language of independent claim 1. We further find that the Specification
identifies problems with conventional technologies. (See Spec. ,r 6)). We
further find that the Specification discloses "the service event attribute may
be a service request initiated by a patient in a health care facility, and the
service quality category may comprise at least one service quality category
that correlates to an HCAHPS measure." (Spec. ,r 11) (emphasis added).
From the disclosure, we find the claimed invention is broader than the
disclosed problem and solution, and the claimed invention does not
correspond to the Appellant's arguments. Claim terms in a patent
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application are given the broadest reasonable interpretation consistent with
the Specification, as understood by one of ordinary skill in the art. In re
Crish, 393 F.3d 1253, 1256 (Fed. Cir. 2004). Our reviewing court states that
"the words of a claim 'are generally given their ordinary and customary
meaning."' Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005)
( en bane) ( citations omitted). "In the patentability context, claims are to be
given their broadest reasonable interpretations[,] ... limitations are not to be
read into the claims from the specification." In re Van Geuns, 988 F.2d
1181, 1184 (Fed. Cir. 1993) (citations omitted). Applicants always have the
opportunity to amend the claims during prosecution and broad interpretation
by the Examiner reduces the possibility that the claim, once issued, will be
interpreted more broadly than is justified. In re Prater, 415 F.2d 1393,
1404---05 (CCP A 1969).
Claims 23 and 24
With respect to the dependent claims 23 and 24, Appellant presents
arguments to the claims together. Therefore, we select dependent claim 23
as the representative claim and address Appellant's arguments thereto.
37 C.F.R. § 4I.37(c)(l)(iv).
With respect to dependent claim 23, Appellant traverses the
obviousness rejection of dependent claim 23 because the Examiner stated, in
the Advisory Action, that "Examiner acknowledges the amendments read
over the current rejection." (App Br. 11-12). We find Appellant's general
argument to take the Examiner's statement out of context. Clearly, the
proposed amendment to independent claim 1 would change the scope and
consideration of all the dependent claims from amended independent claim 1
from that of prior dependent claim 23. Additionally, the proposed amended
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claim 1 would necessarily differentiate over the proffered rejection of the
unamended independent claim 1 because the Examiner relied upon fewer
references in the obviousness rejection of the unamended claim 1 than in the
rejection of dependent claim 23. Therefore, Appellant's general argument is
unavailing.
Appellant further argues that:
Appellant understands. However, Appellant disagrees with the
Final Action's proposal that the "NAPH reference does not teach
away from surveying before the discharge." The HCAHPS
specifically state that:
"Surveying of sampled patients must be initiated between
48 hours and six weeks ( 42 days) after discharge,
regardless of the mode of survey administration.
Distributing surveys to patients before they are discharged
is not allowed." (Emphasis omitted.)
HCAHPS surveys are drawn randomly from eligible discharges
and data must not be administered while the patient is still in the
hospital. This is inconsistent with the teachings of Manning.
Appellant submits that since the NAPH and HCAHPS clearly
teach away from surveying before discharge, they teach away
from the embodiment claimed.
(App. Br. 23).
We disagree with Appellant because the Examiner relied upon the
NAPH reference for teaching the specific HCAHPS survey measures
regarding a standardized survey instrument and the Examiner did not
specifically rely upon performing the HCAHPS survey. (Final Act. 59-65).
Additionally, Appellant has not identified where in the NAPH reference the
specific quotation is found which Appellant relied upon. As a result,
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Appellant's argument is not based upon the teachings and suggestions within
the NAPH reference.
Appellant further contends that the teachings ofNAPH "should not be
combined with Qadri because NAPH, as a whole, teaches away from such a
solution." (App. Br. 23).
"A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant." In re Gurley, 27 F.3d 551, 553
(Fed. Cir. 1994). We disagree with Appellant's general contention because
Appellant has identified no "teaching away" within the NAPH reference
which criticizes, discredits, or otherwise discourages the solution claimed.
As a result, Appellant's argument does not show error in the Examiner's
factual findings or conclusion of obviousness of representative dependent
claim 23 and dependent claim 24 not separately argued.
Claim 8
With respect to dependent claim 8, Appellant addresses a number of
deficiencies in the base combination regarding intervening claim 7 regarding
the Wennberg reference. (App. Br. 24--25). Appellant further contends that
the Torress reference does not disclose creating "an actual category measure
difference" or "an actual predicted measure category difference." (App.
Br. 25). Appellant contends because Torress does not disclose these
elements as proposed, the proposed combination with Torress does not
anticipate the claimed embodiment. (App. Br. 26).
We disagree with Appellant. We find the Examiner provides a
detailed response regarding dependent claim 8 addressing the teachings and
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suggestions of the W ennberg reference regarding "predicted measures" and
the combination of the teachings of Manning, Qadri, Wennberg, NAPH, and
Torress. (Ans. 25-26; Final Act. 54--73). Additionally, in the Final Action,
the Examiner addresses the Torress reference as it teaches and suggests
actual category measures to achieve a care providing rating which
prospective customers can then easily compare the ratings from various care
providers. (Final Act. 71-72). We find Appellant's arguments do not show
error in the Examiner's factual findings or conclusion of obviousness of
dependent claim 8.
Reply Brief
Appellant did not file a Reply Brief to further respond to the
Examiner's clarifications in the Examiner's Answer regarding the patent
eligibility rejection and the obviousness rejections of claims 1, 8, and 23.
Therefore, Appellant has not shown error in the Examiner's clarifications
and responses of claims 1, 8, and 23.
CONCLUSIONS
The Examiner did not err in rejecting claims 1, 3, 5-11, and 13-25
based upon a lack of patent-eligible subject matter under 35 U.S.C. § 101,
and the Examiner did not err in rejecting claims 1, 3, 5-11, and 13-25 based
upon obviousness under 35 U.S.C. § 103.
DECISION
For the above reasons, we sustain the Examiner's lack of patent-
eligible subject matter rejection of claims 1, 3, 5-11, and 13-25, and we
sustain the Examiner's obviousness rejections of claims 1, 3, 5-11, and 13-
25.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.I36(a)(l)(iv).
AFFIRMED
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