Ex Parte Prescott et al

Patent Trial and Appeal Board

Mar 15, 2018

11751145 (P.T.A.B. Mar. 15, 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.
11/751,145 05/21/2007 Timothy Monroe Prescott 127210.00004 1467
34282 7590 03/19/2018
QUARLES & BRADY LLP (TUC)
Attn: IP Docket
ONE SOUTH CHURCH AVENUE, SUITE 1700
EXAMINER
WILLIAMS, TERESA S
TUCSON, AZ 85701-1621 ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
03/19/2018 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):
pat-dept@quarles.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TIMOTHY MONROE PRESCOTT,
DAVID MONROE PRESCOTT,
and ANNA CLARE PRESCOTT
Appeal 2016-008353
Application 11/751,145
Technology Center 3600
Before ANTON W. FETTING, NINA L. MEDLOCK, and
THOMAS F. SMEGAL, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Timothy Monroe Prescott, David Monroe Prescott, and Anna Clare
Prescott (Appellants) seek review under 35 U.S.C. § 134 of a final rejection
1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed November 20, 2015) and Reply Brief (“Reply Br.,” filed August
30, 2016), and the Examiner’s Answer (“Ans.,” mailed July 1, 2016), and
Final Action (“Final Act.,” mailed May 20, 2015).
Appeal 2016-008353
Application 11/751,145
of claims 1-21, the only claims pending in the application on appeal. We
have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
The Appellants invented a way of checking and verifying blood
screening data. Specification para. 1.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A computer-implemented method of verifying data from an
electronic blood screen panel, comprising:
[1] extracting blood screening data from the electronic blood
screen panel into a first data summary using a computer system,
the first data summary including a lot number and
expiration date, a donor number, and a number of
negative reactions in each row and column in the
electronic blood screen panel;
[2] querying a user
to manually enter a second data summary of the blood
screening data using the computer system,
the second data summary of the blood screening data
including the lot number and expiration date, the donor
number, and the number of negative reactions in each
row and column in the panel;
[3] using the computer system to compare the first and second
data summaries
to evaluate an accuracy of the blood screening data
extracted from the electronic blood screen panel;
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[4] using the computer system to generate a first security code
according to an algorithm
when the first and second data summaries match,
the first security code being based on current blood
screening data incorporated into the first data summary,
and
the first security code [being] appended to the electronic
blood screen panel.
Claims 1-21 stand rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter.
ISSUES
The issues of eligible subject matter turn primarily on whether the claims
recite more than abstract conceptual advice of what a computer is to provide
without implementation details.
ANALYSIS
Method claim 1 recites extracting blood screening data, querying a user
to manually enter a second data summary, comparing data summaries, and
generating and appending a code. Thus, claim 1 recites extracting, querying,
entering, comparing, and generating data. None of the limitations recites
implementation details for any of these steps, but instead recite functional
results to be achieved by any and all possible means. Data reception,
analysis and modification, and generation are all generic, conventional data
processing operations to the point they are themselves concepts awaiting
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implementation details. The independent claims do not functionally rely
upon the appended code, so what it might be used for is of no moment. The
sequence of data reception-analysis-generation is equally generic and
conventional. The ordering of the steps is, therefore, ordinary and
conventional. The remaining claims merely describe data parameters and
mental interpretations of the generated code, with no implementation details.
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, []
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. [] If so, we then ask, “[w]hat
else is there in the claims before us? [] To answer that question,
[] consider the elements of each claim both individually and “as
an ordered combination” to determine whether the additional
elements “transform the nature of the claim” into a patent-
eligible application. [The Court] described step two of this
analysis as a 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.”
Alice Corp., Pty. Ltd. v CLS Bank Inti, 134 S.Ct. 2347, 2355 (2014) (citing
Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66
(2012)).
To perform this test, we must first determine whether the claims at issue
are directed to a patent-ineligible concept. The Examiner finds the claims
directed to
gathering or extracting data from an electronic blood
screen panel and organizing the data in a summary form
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Application 11/751,145
with groups forming rows and columns, containing lot
numbers, expiration dates, donor numbers and number of
negative reaction, then querying a user's blood screen panel
data to compare it with the gathered and extracted data to
determine if a match occurs to grant security access.
Final Act. 2-3.
Although the Court in Alice made a determination as to what the claims
were directed to, we find that this case’s claims themselves and the
Specification provide enough information to inform one as to what they are
directed to.
The preamble to claim 1 recites that it is a method of verifying data from
an electronic blood screen panel. The steps in claim 1 result in appending a
code based on data accuracy and matching to blood panel data. The
Specification at paragraph 1 recites that the invention relates to checking
accuracy and verifying blood screening data. Thus, all this evidence shows
that claim 1 is directed to analyzing and summarizing and testing medical
data, i.e. data verification. This is consistent with the Examiner’s finding.
It follows from prior Supreme Court cases, and Bilski (Bilski v Kappos,
561 U.S. 593 (2010)) in particular, that the claims at issue here are directed
to an abstract idea. The use of data verification is a building block of
ingenuity in data analysis. As in Alice Corp. Pty. Ltd., we need not labor to
delimit the precise contours of the “abstract ideas” category in this case. It is
enough to recognize that there is no meaningful distinction in the level of
abstraction between the concept of risk hedging in Bilski and the concept of
data verification at issue here. Both are squarely within the realm of
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“abstract ideas” as the Court has used that term. See Alice Corp. Pty. Ltd. at
2357.
Further, claims involving data collection, analysis, and display are
directed to an abstract idea. Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350,
1353 (Fed. Cir. 2016) (holding that “collecting information, analyzing it, and
displaying certain results of the collection and analysis” are “a familiar class
of claims ‘directed to’ a patent ineligible concept”); see also In re TLI
Commc ’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir.
2016). Claim 1, unlike the claims found non-abstract in prior cases, uses
generic computer technology to perform data extraction, querying, entering,
comparing, and generating and does not recite an improvement to a
particular computer technology. See, e.g., McRO, Inc. v. Bandai Namco
Games Am. Inc., 837 F.3d 1299, 1314-15 (Fed. Cir. 2016) (finding claims
not abstract because they “focused on a specific asserted improvement in
computer animation”). As such, claim 1 is directed to the abstract idea of
extracting, querying, entering, comparing, and generating data.
The remaining claims merely describe data parameters and mental
interpretations of the generated code. We conclude that the claims at issue
are directed to a patent-ineligible concept.
The introduction of a computer into the claims does not alter the analysis
at Mayo step two.
the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
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Stating an abstract idea “while adding the words ‘apply it’” is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological environment.
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implement[t]” an abstract
idea “on ... a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the preemption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of “additional
feature[e]” that provides any “practical assurance that the
process is more than a drafting effort designed to monopolize
the [abstract idea] itself.”
Alice Corp. Pty. Ltd., 134 S.Ct. at 2358 (citations omitted).
“[T]he relevant question is whether the claims here do more than simply
instruct the practitioner to implement the abstract idea [] on a generic
computer.” Alice Corp. Pty. Ltd., 134 S.Ct. at 2359. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer for extracting, querying, entering, comparing, and generating data
amounts to electronic data query and retrieval—one of the most basic
functions of a computer. All of these computer functions are well-
understood, routine, conventional activities previously known to the
industry. In short, each step does no more than require a generic computer
to perform generic computer functions.
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Considered as an ordered combination, the computer components of
Appellants’ method add nothing that is not already present when the steps
are considered separately. Viewed as a whole, Appellants’ method claims
simply recite the concept of data verification as performed by a generic
computer. To be sure, the claims recite doing so by advising one to compare
two data sets and append a code to one set when the data sets match. But
this is no more than abstract conceptual advice on the parameters for such
data verification and the generic computer processes necessary to process
those parameters, and do not recite any particular implementation.
The method claims do not, for example, purport to improve the
functioning of the computer itself. Nor do they effect an improvement in
any other technology or technical field. The 17 pages of specification spell
out different generic equipment and parameters that might be applied using
this concept and the particular steps such conventional processing would
entail based on the concept of data verification under different scenarios.
They do not describe any particular improvement in the manner a computer
functions. Instead, the claims at issue amount to nothing significantly more
than an instruction to apply the abstract idea of data verification using some
unspecified, generic computer. Under our precedents, that is not enough to
transform an abstract idea into a patent-eligible invention. See Alice Corp.
Pty. Ltd. at 2360.
As to the structural claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
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Application 11/751,145
computer components configured to implement the same idea.
This Court has long “wam[ed] ... against” interpreting § 101“in
ways that make patent eligibility ‘depend simply on the
draftsman’s art.’
Alice Corp. Pty. Ltd. at 2360.
We are not persuaded by Appellants’ argument that the Examiner
provides no evidence that the claimed limitations are “well-understood,
routine, and conventional activities.” App. Br. 10. We find supra that data
reception, analysis and modification, and generation are all generic,
conventional data processing operations to the point they are themselves
concepts awaiting implementation details.
We are not persuaded by Appellants’ argument that the claims were held
to be patentable over the art applied in the prior appeal. Id. “A claim for a
new abstract idea is still an abstract idea. The search for a § 101 inventive
concept is thus distinct from demonstrating § 102 novelty.” Synopsys, Inc.
v. Mentor Graphics Corporation, 839 F.3d 1138, 1151 (Fed. Cir. 2016).
We are not persuaded by Appellants’ argument that with regard to each
independent claim, the recited invention addresses the technology-centric
challenge of verifying the accuracy of blood screening data retrieved from
an electronic blood screening panel. App. Br. 11. The issue is not whether
the claims solve a technology centric problem, but whether the claims do
more than implement the abstract idea with routine, conventional activity.
We conclude that the limitations of the ’545 claims do not
transform the abstract idea that they recite into patent-eligible
subject matter because the claims simply instruct the
practitioner to implement the abstract idea with routine,
conventional activity. . . . Adding routine additional steps such
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as updating an activity log, requiring a request from the
consumer to view the ad, restrictions on public access, and use
of the Internet does not transform an otherwise abstract idea
into patent-eligible subject matter. Instead, the claimed
sequence of steps comprises only “conventional steps, specified
at a high level of generality,” which is insufficient to supply an
“inventive concept.”
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (2014). Further, that the
claims recite the context of blood panel data is of no help.
To be sure, the ’379 patent claims the wireless delivery of
regional broadcast content only to cellphones. In that sense, the
claims are not as broad as the abstract idea underlying them,
which could apply to the delivery of out-of-region content to
any electronic device. That restriction, however, does not alter
the result. All that limitation does is to confine the abstract idea
to a particular technological environment—in this case, cellular
telephones. The Supreme Court and this court have repeatedly
made clear that merely limiting the field of use of the abstract
idea to a particular existing technological environment does not
render the claims any less abstract.
Affinity Labs of Texas, LLCv. DIRECTV, LLC, 838 F.3d 1253, 1258
(Fed. Cir. 2016).
CONCLUSIONS OF LAW
The rejection of claims 1-21 under 35 U.S.C. § 101 as directed to non-
statutory subject matter is proper.
DECISION
The rejection of claims 1-21 is affirmed.
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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. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv) (2011).
AFFIRMED
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