Ex Parte Patel et al

Patent Trials and Appeals Board

Mar 18, 2019

13107338 - (D) (P.T.A.B. Mar. 18, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/107,338 05/13/2011 Minalkumar Patel
2352 7590 03/20/2019
OSTROLENK FABER LLP
845 THIRD A VENUE
NEW YORK, NY 10022
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.
P/6126-2 7204
EXAMINER
COLEMAN, CHARLES P.
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
03/20/2019 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):
pat@ostrolenk.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte MINALKUMARPATEL, MOHANP. CHARLES,
MELISSA SAMPSON, and MICHAEL ESCUDER 1
Appeal2017-008031
Application 13/107,338
Technology Center 3600
Before CAROLYN D. THOMAS, ERIC B. CHEN, and
SHARON PENICK, Administrative Patent Judges.
CHEN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1-14, 23-28, and 31-35. Claims 15-22, 29, and 30 have been
cancelled. We have jurisdiction under 35 U.S.C. § 6(b ). We reverse.
1 Appellants state that the real party in interest is the assignee, Rx Specialty
Hub LLC. (App. Br. 1.)
Appeal2017-008031
Application 13/107,338
STATEMENT OF THE CASE
Appellants' invention relates to an interactive, electronic, knowledge-
based ordering process for specialty/biotech pharmaceuticals (i.e., medically
coded drugs). (Abstract.)
Claim 1 is exemplary:
1. A method for authorizing and dispensing drugs, the
method comprising:
providing a database of patient eligibility criteria for drugs, the
patient eligibility criteria associated with a plurality of health plans,
and the database including patient identifying information associated
with said health plans;
interactively receiving an input from a user, the input including
a prior authorization request including an identification of a particular
patient and a selection of a drug, the input further including a choice
of a specialty pharmacy;
determining automatically by a data processor, based on the
prior authorization request, a health plan corresponding with said
identified patient in said database, and evaluating, automatically by
the data processor, said patient eligibility criteria for said selected
drug to determine whether said identified patient is eligible for the
drug according to the automatically determined corresponding health
plan;
providing automatically, by the data processor, in response to
the evaluating of said patient eligibility criteria for the corresponding
health plan based on the prior authorization request, an authorization
code to said user corresponding with said selected drug and said
identified patient;
receiving automatically, by the data processor, a pharmacy
dispensing report from said chosen specialty pharmacy, wherein said
pharmacy dispensing report is associated with said authorization code
and provides a pharmacy confirmation that said selected drug was
dispensed to at least one of a healthcare provider and said identified
patient;
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Application 13/107,338
receiving automatically, by the data processor, a medical claims
report from said health plan, wherein said medical claims report is
associated with said authorization code and provides a medical
confirmation that said selected drug was administered to said
identified patient at the approved dosage; and
updating automatically, by the data processor, said database
with utilization data corresponding to said pharmacy dispensing report
and said medical claims report.
Claims 1-14, 23-28, and 31-35 stand rejected under 35 U.S.C. § 101
as directed to patent-ineligible subject matter.
Claims 1-14, 23-27, 31, 33, and 34 stand rejected under 35 U.S.C.
§ I03(a) as unpatentable over Greene (US 2008/0033751 Al, published
Feb. 7, 2008), Seelinger (US 2002/0077857 Al, published June 20, 2002),
and Scantland et al. (US 2012/0185270 Al, published July 19, 2012).
Claims 28, 32, and 35 stand rejected under 35 U.S.C. § I03(a) as
unpatentable from Greene, Seelinger, Scantland, and Kane et al. (US
2008/0221932 Al, published Sept. 11, 2008).
ANALYSIS
§ 101 Rejection
We are persuaded by Appellants' arguments (Reply Br. 1-2) that the
Examiner has not satisfied the proper burden for making a prima facie case
for patent ineligibility under 35 U.S.C. § 101.
Under the patent eligibility guidelines at the time of the rejection, the
Examiner determined that:
[ c ]laim( s) 1, 23 and 25 recite, in part, methods for performing
the steps of "providing a database of patient eligibility criteria,
receiving input from a user, determining a health plan based on
user input, evaluating patient eligibility, receiving a pharmacy
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Application 13/107,338
dispensing report, receiving a medical claims report, updating
the database"
and "[ t ]hese steps corresponds to concepts identified as abstract ideas by the
courts, such as 'an idea of itself in Alice." (Ans. 9.) Moreover, the
Examiner determined that "[ e ]xamples of 'an idea of itself are the concepts
of 'collecting information, analyzing it, and displaying certain results of the
collection and analysis' (Electric Power Group). [2J" (Id.; see also Final
Act. 2.) However, we agree with Appellants that the Examiner's sweeping
reliance upon Electric Power Group has not satisfied the proper burden for a
prima facie case.
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. E.g., Alice Corp. v. CLS Bank Int 'l, 573 U.S. 208,
216 (2014).
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. Id. at 217-18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
we first determine what concept the claim is "directed to." See Alice, 573
U.S. at 219 ("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
2 Elec. Power Grp. v. Alstom, S.A., 830 F.3d 1350 (Fed. Cir. 2016).
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in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219--20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes ( Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 192
( 1981) ); "tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores" (id. at 184 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267---68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 176; see also id. at 192 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. ( citing Benson and Flook); see, e.g., id. at 187 ("It is
now commonplace that an application of a law of nature or mathematical
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Application 13/107,338
formula to a known structure or process may well be deserving of patent
protection.").
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
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 ( 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, 2019 Revised Patent
Subject Matter Eligibility Guidance ("Memorandum"). 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 interactions such as a fundamental economic practice, or
mental processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a}-(c), (e}-(h)).
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:
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(3) adds a specific limitation beyond the judicial exception that are 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.
See Memorandum.
Although the Examiner generally states "[ t ]hese steps [ recited in
claims 1, 23, and 25] corresponds to concepts identified as abstract ideas by
the courts, such as 'an idea of itself with a citation to Electric Power
Group" (Ans. 9), this statement, along with the Examiner's other statements
regarding the § 101 rejection in the Final Action and Answer, does not
provide a clear determination as to whether and how the identified
limitations fall within the subject matter groupings of abstract ideas of
mathematical concepts, certain methods of organizing human interactions, or
mental processes. See Memorandum 16. In particular, the Examiner does
not adequately articulate why the claimed concepts are analogous to the facts
of Electric Power Group, but merely overgeneralizes Appellants' claimed
invention. This overgeneralized abstract idea does not meet the Examiner's
requisite burden for analysis under the 2019 Revised Patent Matter
Eligibility Guidance.
Accordingly, we are persuaded by Appellants' arguments that the
Examiner "aver[ s] without explanation or justification that the claims recite
generic computer components and their functions at 'a high degree of
generality' and thus, constitute an abstract idea" and the Examiner
improperly "asserts that the claims 'are directed to an abstract idea related to
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collecting information, analyzing it, and displaying of certain results of the
collection and analysis."' (Reply Br. 1-2.)
Thus, we do not sustain the rejection of claims 1, 23, and 25 under
35 U.S.C. § 101. Claims 2-14, 24, 26-28, and 31-35 depend from
independent claims 1, 23, and 25. We do not sustain the rejection of
claims 2-14, 24, 26-28, and 31-35 under 35 U.S.C. § 101 for the same
reasons discussed with respect to independent claims 1, 23, and 2 5.
§ 103 Rejections
The Examiner rejected claims 1-14, 23-28, and 31-35 under
35 U.S.C. § I03(a) as unpatentable over various combinations of references,
each including Scantland. In particular, the Examiner provided citations to
the published application of Scantland (i.e., US 2012/0185270 Al) (Final
Act. 5---6; see also Ans. 4 ), but relied upon the filing date of the provisional
application (i.e., Application No. 61/306,272) (Final Act. 15). The
Examiner further determined "that Provisional Application 61/306,272
supports fully Scantland et al. (See at least paragraphs [0031 ], [0047]-
[0051 ], [0052]-[0056] of Provisional Application 61/306,272)." (Final
Act. 15.) We do not agree with the Examiner's conclusion that Scantland is
available as prior art.
The present application, Application No. 13/107,338, was filed on
May 13, 2011. Scantland, which is based upon Application No. 13/413,231
was filed on March 6, 2012, but claims priority to Provisional Application
No. 61/306,272, filed on February 19, 2010. Thus, the present application
was filed after the filing date of the Scantland U.S. provisional application,
but before the non-provisional filing date of the Scantland U.S. application.
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A U.S. patent or U.S. application publication is entitled to the benefit
of the filing date of a provisional application to which priority is claimed
under 35 U.S.C. § 119(e) as its pre-AIA 35 U.S.C. § 102(e) critical reference
date if the provisional application(s) properly supports the subject matter
relied upon to make the rejection in compliance with pre-AIA 35 U.S.C.
§ 112, first paragraph. MPEP § 2136.03(III). In addition, the pre-AIA
35 U.S.C. § 102(e) critical reference date of a U.S. patent may be the filing
date of a relied upon provisional application only if at least one of the claims
in the patent is supported by the written description of the provisional
application in compliance with pre-AIA 35 U.S.C. § 112, first paragraph.
Id. (citing Dynamic Drinkware, LLC v. Nat'! Graphics, Inc., 800 F.3d 1375
(Fed. Cir. 2015)).
The Examiner, on this record, has not provided the requisite finding
that the provisional application's written description supports at least one of
the claims in Scantland, in compliance with 35 U.S.C. § 112, first paragraph.
See Dynamic Drinkware, 800 F.3d at 1381 (finding insufficient the
combination of: (1) a comparison between the claims of the patent-in-suit
and the disclosure of the prior art patent; and (2) a comparison between a
claim of the patent-in-suit and the provisional application upon which the
prior art patent's priority claim is based). We do not presume that the
provisional application supports the paragraphs of Scantland cited in the
Examiner's rejection, because we have no basis on this record for doing so.
See id. at 1380 ("[B]ecause the PTO does not examine priority claims unless
necessary, the Board has no basis to presume that a reference patent is
necessarily entitled to the filing date of its provisional application."). The
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record is silent on a comparison between a claim of Scantland's patent
application and the disclosure of the provisional application of Scantland.
Accordingly, we are persuaded by Appellants' arguments that:
the Scantland reference is based on Provisional Patent
Application 61/306,272 filed February 19, 2010 (the Scantland
Provisional). Therefore, pursuant to recent Federal Circuit case
law, the provisional filing date ofScantland can be used as a prior
art reference date against the present application, but only to the
extent that the Scantland Provisional discloses the subject matter
of the present claims.
(App. Br. 11.)
Thus, we do not sustain the rejection of claims 1-14, 23-28, and 31-
35 under 35 U.S.C. § 103(a) as unpatentable over various combinations of
Greene, Seelinger, Scantland, and Kane.
DECISION
The Examiners' decision to rejecting claims 1-14, 23-28, and 31-35
is reversed.
REVERSED
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