Ex Parte Semen et al

Patent Trials and Appeals Board

Jul 8, 2019

13772833 - (D) (P.T.A.B. Jul. 8, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/772,833 02/21/2013 Timothy Semen
147311 7590 07/10/2019
Botos Churchill IP Law LLP
430 Mountain A venue
Suite 401
New Providence, NJ 07974
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.
RESMED 3.0-100 (836) 7550
EXAMINER
TIEDEMAN, JASON S
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
07/10/2019 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):
pto@bciplaw.com
rchurchill@bciplaw.com
rbotos@bciplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TIMOTHY SEMEN,
NATALIE ZOTELO,
PETER DELANGRE,
SAMUEL ROBERT CA VENAGH,
CHARLES FORDWICH BLAXLAND,
and DANIEL MARK LIVOLSI
Appeal2017-009246 1
Application 13/772,833 2
Technology Center 3600
Before ANTON W. PETTING, BIBHU R. MOHANTY, and
NINA L. MEDLOCK, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
1 The record includes a transcript of the oral hearing held June 27, 2019.
2 According to Appellants, the real party in interest is ResMed Limited
(Appeal Br. 1 ).
Appeal2017-009246
Application 13/772,833
STATEMENT OF THE CASE 3
Timothy Semen, Natalie Zotelo, Peter Delangre, Samuel Robert
Cavenagh, Charles Fordwich Blaxland, and Daniel Mark Livolsi
(Appellants) seek review under 35 U.S.C. § 134(a) of a final rejection of
claims 1-26, 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 providing healthcare professionals
and flow generator providers with a simple and fast way to track medical
device usage compliance for a number of patients. Specification para. 4.
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 method comprising:
[ 1] communicating,
by one or more processors,
over a network with a plurality of medical devices
to request medical device usage data for a plurality of
medical device users;
[2] receiving and storing the usage data;
3 Our Decision will make reference to the Appellants' Appeal Brief ("App.
Br.," filed January 17, 2017) and Reply Brief ("Reply Br.," filed June 15,
2017), and the Examiner's Answer ("Ans.," mailed April 19, 2017), and
Final Action ("Final Act.," mailed June 14, 2016).
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[3] determining,
with the one or more processors,
whether the plurality of medical device users are
compliant,
wherein compliance is based on whether the
received medical device usage data for a respective
user device satisfies predetermined usage criteria;
[ 4] receiving a request for compliance data for one or more of
the medical device users;
[5] providing for display,
by one or more processors,
a compliance indication for each of the one or more
medical device users,
wherein each compliance indication is based on
whether a particular medical device user, of the
one or more medical device users, has been
determined to be compliant;
[6] providing for display,
by the one or more processors,
a compliance report icon
associated with at least one of the displayed
compliance indications;
[7] receiving a signal indicating that the compliance report icon
has been selected;
and
[8] in response to the compliance report icon having been
selected, automatically generating,
by the one or more processors,
a compliance report
indicating whether the at least one medical device
user associated with the selected compliance report
icon is compliant with respect to the usage criteria.
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The Examiner relies upon the following prior art:
Yurko US 2003/0208465 Al
Ray US 2005/0267780 Al
Nov. 6, 2003
Dec. 1, 2005
Claims 1-26 stand rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more.
Claims 1-15 and 23-26 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Yurko and Ray.
Claims 16-22 stand rejected under 35 U.S.C. § I03(a) as unpatentable
over Yurko, Ray, and Admitted Prior Art.
ISSUES
The issues of eligible subject matter tum primarily on whether the
claims recite more than abstract conceptual advice of results desired.
The issues of obviousness tum primarily on whether the art describes
icons and reports that are encompassed within the scope of those recited in
the claims.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to the Prior Art
Yurko
01. Yurko is directed to managing medically-related information.
Yurko para. 3.
02. Yurko describes a central database resident on a computing
system, and the central database includes multiple disparate data
fields containing data pertaining to patient-related information.
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The system has a user interface in communication with the central
database for accepting user input and transmitting system output.
A visual display is in communication with the user interface and
displays the disparate data fields in selected or selectable formats.
In a preferred embodiment, the system includes a report
generating module and a download management module, both of
which are in communication with the central database. Yurko
para. 18.
03. Yurko describes the inputted data as including compliance
data, which are data indicative of a patient's compliance with a
prescribed pressure support therapy. Yurko para. 34.
04. Yurko describes predetermined or pre-formatted reports for
user selection. For example, this may be useful for reports that are
typically and continually used for assessment purposes and should
be at the user's "fingertips." Yurko para. 36.
05. Yurko describes that its FIG. 6 illustrates a reports screen
listing the predetermined reports available for an individual
patient. These reports include, but are not limited to, a
compliance report that tracks the patient usage of the medical
equipment, an FOSQ trend report, and a patient demographics
report. The reports screen is accessed, for example, by selecting
the "reports" item listed in the common tasks section of the
toolbar from the patient home page. Each of these available
reports can be generated by selecting, i.e., clicking, on the desired
report from the reports screen. Yurko para. 63.
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06. Yurko describes that its Figs. 18A-19B illustrate screens for
creating and presenting aggregate reports, which are reports that
display information about the entire patient database, rather than
information about a single patient. Yurko para. 98.
Ray
07. Ray is directed to methods and systems for use by healthcare
professionals to manage a patient's health. Ray para. 2.
08. Ray describes reports of the organized data being printed out
automatically. The reports may be configured to display data
generated over any period of time, for example, in order for the
healthcare professional to observe new trends against historical
data. Ray para. 6.
09. Ray describes transmitting patient-specific glucose event and
trend information, medication compliance from a medical device
to a computer. Ray para. 22.
10. Ray describes software providing trend graphs that display
causes of glycemic events, e.g., food, medication, exercise, stress,
in a unique iconic format. Ray para. 23.
11. Ray, referring to its Fig. 6, describes data points or glycemic
events falling below minimum value and above maximum value
being tagged with various icons symbolic of the glycemic event.
Additional details, e.g., the specific type of event, date and time of
the event or glucose measurement, the value of measurement, user
comments, etc., about an event are displayed when a mouse is
hovered over the corresponding event icon. Ray para. 33.
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ANALYSIS
Claims 1-26 rejected under 35 U.S.C. § 101 as directed to ajudicial
exception without significantly more
STEP 11
Claim 1, as a method claim, nominally recites one of the enumerated
categories of eligible subject matter in 35 U.S.C. § 101. The issue before us
is whether it is directed to a judicial exception without significantly more.
STEP2
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. v CLS Banklnt'l, 573 U.S. 208, 217-18 (2014) (citations
omitted) (citing Mayo Collaborative Sers. v. Prometheus Labs., Inc.,
566 U.S. 66 (2012)). To perform this test, we must first determine what the
claims are directed to. This begins by determining whether the claims recite
4 For continuity of analysis, we adopt the steps nomenclature from 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) ("Revised Guidance").
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one of the judicial exceptions ( a law of nature, a natural phenomenon, or an
abstract idea). Then, if claims recite a judicial exception, determining
whether the claims at issue are directed to the recited judicial exception, or
whether the recited judicial exception is integrated into a practical
application of that exception, i.e., that the claims "apply, rely on, or use 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." Revised Guidance, 84 Fed. Reg.
at 53. If the claims are directed to a judicial exception, then finally
determining whether the claims provide an inventive concept because the
additional elements recited in the claims provide significantly more than the
recited judicial exception.
STEP 2A Prong 1
At a high level, and for our preliminary analysis, we note that method
claim 1 recites requesting, receiving, and storing usage data, determining
whether data describing users show compliance receiving a request for, and
providing compliance data, providing a compliance report icon for display,
receiving selection data, and generating a report. Determining whether data
show compliance is rudimentary analysis by checking against decision
criteria. Providing data is transmission. Generating a report is rudimentary
analysis and display. Thus, claim 1 recites receiving, storing, analyzing,
transmitting, and displaying data. None of the limitations recites
technological implementation details for any of these steps, but instead recite
only results desired by any and all possible means.
From this we see that claim 1 does not recite the judicial exceptions of
either natural phenomena or laws of nature.
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Under Supreme Court precedent, claims directed purely to an abstract
idea are patent ineligible. As set forth in the Revised Guidance, which
extracts and synthesizes key concepts identified by the courts, abstract ideas
include (1) mathematical concepts, 5 (2) certain methods of organizing
human activity, 6 and (3) mental processes. 7 Among those certain methods
of organizing human activity listed in the Revised Guidance are commercial
and legal interactions. Like those concepts, claim 1 recites the concept of
medical compliance reporting. Specifically, claim 1 recites operations that
would ordinarily take place in advising one to report compliance as
requested by selecting an icon representing a set of medical device
compliance data. The advice to report compliance as requested by selecting
an icon representing a set of medical device compliance data involves
compliance reporting, which is a medical and legal act, and collecting
compliance data, which is an act ordinarily performed in the stream of
medical commerce. For example, claim 1 recites "generating ... a
compliance report," which is an activity that would take place whenever one
is reporting medical compliance. Similarly, claim 1 recites "determining ...
5 See, e.g., Gottschalkv. Benson, 409 U.S. 63, 71-72 (1972); Bilski v.
Kappas, 561 U.S. 593, 611 (2010); Mackay Radio & Telegraph Co. v. Radio
Corp. of Am., 306 U.S. 86, 94 (1939); SAP Am., Inc. v. InvestPic, LLC, 898
F.3d 1161, 1163 (Fed. Cir. 2018).
6 See, e.g., Bilski, 561 U.S. at 628; Alice, 573 U.S. at 219-20; Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014); Smart Sys.
Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1383 (Fed. Cir.
2017); In re Marco Guldenaar Holding B. V., 911 F.3d 1157, 1160--61 (Fed.
Cir. 2018).
7 See, e.g., Benson, 409 U.S. at 67; CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1371-72 (Fed. Cir. 2011); Intellectual Ventures I LLC
v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016).
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whether the plurality of medical device users are compliant," which is also
characteristic of compliance reporting.
The Examiner determines the claims to be directed to determining and
reporting compliance with medical device usage requirements. Final Act. 2.
The preamble to claim 1 does not recite what it is to achieve, but the
steps in claim 1 result in a report indicating medical compliance absent any
technological mechanism other than a conventional computer for doing so.
As to the specific limitations, limitations 1, 2, 4, and 7 recite generic data
reception and storage. Limitations 5, 6, and 8 recite transmitting and
displaying of compliance data, which advise one to apply generic functions
to get to these results. Limitation 3 recites rudimentary analysis absent any
technological implementation details. The limitations thus recite advice for
reporting compliance as requested by selecting an icon representing a set of
medical device compliance data. To advocate reporting compliance as
requested by selecting an icon representing a set of medical device
compliance data is conceptual advice for results desired and not
technological operations.
The Specification at paragraph 4 describes the invention as relating to
providing healthcare professionals and flow generator providers with a
simple and fast way to track medical device usage compliance for a number
of patients. Thus, all this intrinsic evidence shows that claim 1 is directed to
providing medical compliance information, i.e., medical compliance
reporting. This is consistent with the Examiner's determination.
This in tum is an example of commercial or legal interactions as a certain
method of organizing human activity because compliance is a legal
requirement and reporting of compliance is a legal interaction. The concept
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of medical compliance reporting by reporting compliance as requested by
selecting an icon representing a set of medical device compliance data is one
idea for collecting the data for reporting. The steps recited in claim 1 are
part of how this might conceptually be premised.
Our reviewing court has found claims to be directed to abstract ideas
when they recited similar subject matter. Credit Acceptance Corp. v.
Westlake Services, 859 F.3d 1044, 1055 (2017) (selection of items); Smart
Sys. Innovations, LLC, 873 F.3d at 1372 (collection, storage, and recognition
of data).
Alternately, this is an example of concepts performed in the human mind
as mental processes because the steps of receiving, storing, analyzing,
transmitting, and displaying data mimic human thought processes of
observation, evaluation, judgment, and opinion, perhaps with paper and
pencil, where the data interpretation is perceptible only in the human mind.
See In re TL! 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 reception, storage,
analysis, transmission, and display 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 receiving, storing,
analyzing, transmitting, and displaying data, and not a technological
implementation or application of that idea.
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From this we conclude that at least to this degree, claim 1 is directed
to medical compliance reporting by reporting compliance as requested by
selecting an icon representing a set of medical device compliance data,
which is a commercial and legal interaction, one of certain methods of
organizing human activity identified in the Revised Guidance, and, thus, an
abstract idea.
STEP 2A Prong 2
The next issue is whether claim 1 not only recites, but is more
precisely directed to this concept itself or whether it is instead directed to
some technological implementation or application of, or improvement to,
this concept i.e., integrated into a practical application. 8
At the same time, we tread carefully in construing this
exclusionary principle lest it swallow all of patent law. At
some level, "all inventions ... embody, use, reflect, rest upon, or
apply laws of nature, natural phenomena, or abstract ideas."
Thus, an invention is not rendered ineligible for patent simply
because it involves an abstract concept. "[A]pplication[s]" of
such concepts "'to a new and useful end,"' we have said,
remain eligible for patent protection. Accordingly, in applying
the § 101 exception, we must distinguish between patents that
claim the "'buildin[g] block[ s] "' of human ingenuity and those
that integrate the building blocks into something more.
Alice, 573 U.S. at 217 (citations omitted).
Taking the claim elements separately, the operation performed by the
computer at each step of the process is expressed purely in terms of results,
devoid of implementation details. Steps 1, 2, 4, and 7 are pure data
gathering steps. Limitations describing the nature of the data do not alter
8 See, e.g., Alice, 573 U.S. at 223, discussing Diamond v. Diehr, 450 U.S.
175 (1981).
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this. Steps 5, 6, and 8 are insignificant post solution activity, such as
storing, transmitting, or displaying the results. Step 3 recites generic
computer processing expressed in terms of results desired by any and all
possible means and so presents no more than conceptual advice. All
purported inventive aspects reside in how the data are interpreted and the
results desired, and not in how the process physically enforces such a data
interpretation or in how the processing technologically achieves those
results.
Viewed as a whole, Appellants' claim 1 simply recites the concept of
medical compliance reporting by reporting compliance as requested by
selecting an icon representing a set of medical device compliance data as
performed by a generic computer. This is no more than conceptual advice
on the parameters for this concept and the generic computer processes
necessary to process those parameters, and does not recite any particular
implementation.
Claim 1 does not, for example, purport to improve the functioning of the
computer itself. Nor does it effect an improvement in any other technology
or technical field. The 15 pages of Specification do not bulge with
disclosure, but only spell out different generic equipment9 and parameters
that might be applied using this concept and the particular steps such
conventional processing would entail based on the concept of medical
compliance reporting by reporting compliance as requested by selecting an
icon representing a set of medical device compliance data under different
scenarios. They do not describe any particular improvement in the manner a
9 The Specification describes a personal computer, such as a desktop or
mobile computer. Spec. para. 23.
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computer functions. Instead, claim 1 at issue amounts to nothing
significantly more than an instruction to apply medical compliance reporting
by reporting compliance as requested by selecting an icon representing a set
of medical device compliance data using some unspecified, generic
computer. Under our precedents, that is not enough to transform an abstract
idea into a patent-eligible invention. See Alice, 573 U.S. at 225-26.
None of the limitations reflects an improvement in the functioning of a
computer, or an improvement to other technology or technical field, applies
or uses a judicial exception to effect a particular treatment or prophylaxis for
a disease or medical condition, implements a judicial exception with, or uses
a judicial exception in conjunction with, a particular machine or manufacture
that is integral to the claim, effects a transformation or reduction of a
particular article to a different state or thing, or applies or uses the judicial
exception in some other meaningful way beyond generally linking the use of
the judicial exception to a particular technological environment, such that
the claim as a whole is more than a drafting effort designed to monopolize
the exception.
We conclude that claim 1 is directed to achieving the result of medical
compliance reporting by advising one to report compliance as requested by
selecting an icon representing a set of medical device compliance data, as
distinguished from a technological improvement for achieving or applying
that result. This amounts to commercial or legal interactions, which fall
within certain methods of organizing human activity that constitute abstract
ideas. The claim does not integrate the judicial exception into a practical
application.
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STEP 2B
The next issue is whether claim 1 provides an inventive concept because
the additional elements recited in the claim provide significantly more than
the recited judicial exception.
The introduction of a computer into the claims does not generally 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.
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, 573 U.S. at 223-24 (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, 573 U.S. at 225. 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 receiving, storing, analyzing, transmitting, and displaying data
amounts to electronic data query and retrieval----one of the most basic
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functions of a computer. All of these computer functions are generic,
routine, conventional computer activities that are performed only for their
conventional uses. See Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350,
1353 (Fed. Cir. 2016). See also In re Katz Interactive Call Processing
Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011) ("Absent a possible
narrower construction of the terms 'processing,' 'receiving,' and 'storing,' ..
. those functions can be achieved by any general purpose computer without
special programming"). None of these activities is used in some
unconventional manner nor do any produce some unexpected result.
Appellants do not contend they invented any of these activities. In short,
each step does no more than require a generic computer to perform generic
computer functions. As to the data operated upon, "even if a process of
collecting and analyzing information is 'limited to particular content' or a
particular 'source,' that limitation does not make the collection and analysis
other than abstract." SAP Am., Inc. 898 F.3d at 1168.
Considered as an ordered combination, the computer components of
Appellants' claim 1 add nothing that is not already present when the steps
are considered separately. The sequence of data reception-storage-analysis-
transmission-display is equally generic and conventional. See Ultramercial,
Inc., 772 F.3d at 715 (sequence of receiving, selecting, offering for
exchange, display, allowing access, and receiving payment recited an
abstraction), Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d
1372, 1378 (Fed. Cir. 2017) (sequence of data retrieval, analysis,
modification, generation, display, and transmission), Two-Way Media Ltd. v.
Comcast Cable Commc 'ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017)
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(sequence of processing, routing, controlling, and monitoring). The ordering
of the steps is therefore ordinary and conventional.
We conclude that claim 1 does not provide an inventive concept because
the additional elements recited in the claim do not provide significantly more
than the recited judicial exception.
REMAINING CLAIMS
Claim 1 is representative. The other independent method claim 16 is
substantially similar at least as regards to this analysis. The remaining
method claims merely describe process parameters. We conclude that the
method claims at issue are directed to a patent-ineligible concept itself, and
not to the practical application of that concept.
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
computer components configured to implement the same idea.
This Court has long "warn[ ed] ... against" interpreting § 101 "in
ways that make patent eligibility 'depend simply on the
draftsman's art. '"
Alice, 573 U.S. at 226. As a corollary, the claims are not directed to any
particular machine.
LEGAL CONCLUSION
From these determinations, we further determine that the claims do not
recite an improvement to the functioning of the computer itself or to any
other technology or technical field, a particular machine, a particular
transformation, or other meaningful limitations. From this, we conclude the
claims are directed to the judicial exception of the abstract idea of certain
methods of organizing human activity as exemplified by the commercial and
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legal interaction of medical compliance reporting by reporting compliance as
requested by selecting an icon representing a set of medical device
compliance data, without significantly more.
APPELLANTS' ARGUMENTS
As to Appellants' Appeal Brief arguments, we adopt the Examiner's
determinations and analysis from Final Action 2-7 and Answer 3-13 and
reach similar legal conclusions. We now tum to the Reply Brief.
We are not persuaded by Appellants' argument that the "claims
improve the manner in which medical device usage compliance for a number
of patients may be tracked and presented." Reply Br. 2. The claims only
recite a conceptual idea for doing so, viz. reporting compliance as requested
by selecting an icon representing a set of medical device compliance data.
The claims do not recite technological implementation details.
At that level of generality, the claims do no more than
describe a desired function or outcome, without providing any
limiting detail that confines the claim to a particular solution
to an identified problem. The purely functional nature of the
claim confirms that it is directed to an abstract idea, not to a
concrete embodiment of that idea.
Affinity Labs of Texas, LLC v. Amazon.com Inc., 838 F.3d 1266, 1269
(Fed. Cir. 2016).
The Trading Technologies International, Inc. v. CQG, Inc., 675 F.
App'x. 1001 (Fed. Cir. 2017) case Appellants cite is non-precedential and
distinguishable. Reply Br. 3. The claims in Trading Technologies recited
"dynamically displaying a second indicator in one of a plurality of locations
in an ask display region, each location in the ask display region
corresponding to a price level along the common static price axis." No such
dynamic positioning of data is recited in the claims at hand. In a related
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precedential Trading Technologies case, also reciting a graphical user
interface, the Court held "[t]he claims are focused on providing information
to traders in a way that helps them process information more quickly, not on
improving computers or technology." Trading Techs. Int 'l, Inc. v. !BG LLC,
921 F.3d 1378, 1384 (Fed. Cir. 2019). Similarly, the claims here are focused
on providing information to users in a way that helps them process
information more quickly, not on improving computers or technology.
We are not persuaded by Appellants' argument that "the condition of
whether a patient is compliant in using a medical device is a specified
condition that is based on a particular set of usage criteria." Reply Br. 4.
Using decision criteria to produce a decision is generic conceptual analysis.
Appellants further argue that the asserted claims are akin to the
claims found patent-eligible in DDR Holdings, LLC v. Hotels.com, L.P.
773 F.3d 1245 (Fed. Cir. 2014). Reply Br. 5. In DDR Holdings, the
Court evaluated the eligibility of claims "address[ing] the problem of
retaining website visitors that, if adhering to the routine, conventional
functioning of Internet hyperlink protocol, would be instantly
transported away from a host's website after 'clicking' on an
advertisement and activating a hyperlink." Id. at 1257. There, the court
found that the claims were patent eligible because they transformed the
manner in which a hyperlink typically functions to resolve a problem
that had no "pre-Internet analog." Id. at 1258. The court cautioned,
however, "that not all claims purporting to address Internet-centric
challenges are eligible for patent." Id. For example, in DDR Holdings
the court distinguished the patent-eligible claims at issue from claims
found patent-ineligible in Ultramercial. See id. at 1258-59 ( citing
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Ultramercial, 772 F .3d at 715-16). As noted there, the Ultramercial
claims were "directed to a specific method of advertising and content
distribution that was previously unknown and never employed on the
Internet before." Id. at 1258 (quoting Ultramercial, 772 F.3d at 715-
16). Nevertheless, those claims were patent ineligible because they
"merely recite[d] the abstract idea of 'offering media content in exchange
for viewing an advertisement,' along with 'routine additional steps such as
updating an activity log, requiring a request from the consumer to view the
ad, restrictions on public access, and use of the Internet."' Id.
Appellants' asserted claims are analogous to claims found ineligible
in Ultramercial and distinct from claims found eligible in DDR Holdings.
The ineligible claims in Ultramercial recited "providing [a] media product
for sale at an Internet website"; "restricting general public access to said
media product"; "receiving from the consumer a request to view [a]
sponsor message"; and "if the sponsor message is an interactive message,
presenting at least one query to the consumer and allowing said consumer
access to said media product after receiving a response to said at least one
query." 772 F.3d at 712. Similarly, Appellants' asserted claims recite
receiving, storing, analyzing, transmitting, and displaying data. This is
precisely the type of Internet activity found ineligible in Ultramercial.
We are not persuaded by Appellants' argument that the claims are
analogous to those in Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed.
Cir. 2016). Reply Br. 5. The claims differ from those found patent
eligible in Enfzsh, where the claims were "specifically directed to a self-
referential table fora computer database." 822 F.3d 1327, 1337 (Fed. Cir.
2016). The claims thus were "directed to a specific improvement to the
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way computers operate" rather than an abstract idea implemented on a
computer. Id. at 1336. Here, by contrast, the claims are not directed to
an improvement in the way computers operate. Though the claims
purport to accelerate the process of deciding compliance, our reviewing
court has held that speed and accuracy increases stemming from the
ordinary capabilities of a general purpose computer "do[] not materially
alter the patent eligibility of the claimed subject matter." Bancorp Servs.,
L.L.C. v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1278
(Fed. Cir. 2012). Instead, the claims are more analogous to those in
FairWarning, wherein claims reciting "a few possible rules to analyze the
audit log data" were found directed an abstract idea because they asked
"the same questions ( though perhaps phrased with different words) that
humans in analogous situations detecting fraud have asked for decades."
Fair Warning, 839 F.3d at 1094, 1095.
We are not persuaded by Appellants' argument that "the compliance
reports that are generated are real and have practical application, enabling a
user to quickly gauge compliance for a plurality of patients and generate
detailed reports with a single click." We do not dispute that information has
value. That does not elevate the information beyond the realm of abstract
subject matter. "Information, whether displayed in the form of price values
or P&L values, is abstract." Trading Techs., 921 F.3d at 1384.
We are not persuaded by Appellants' argument that the claims do not
preempt the recited subject matter. Reply Br. 7. "Where a patent's claims
are deemed only to disclose patent ineligible subject matter under the Mayo
[/Alice] framework, as they are in this case, preemption concerns are fully
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addressed and made moot." Ariosa Diagnostics, Inc. v. Sequenom, Inc.,
788 F.3d 1371, 1379 (Fed. Cir. 2015).
Claims 1-15 and 23-26 rejected under 35 U.S. C. § 103 (a) as unpatentable
over Yurko and Ray
As to Appellants' Appeal Brief arguments, we adopt the Examiner's
determinations and analysis from Final Action 8-18 and Answer 13-19 and
reach similar legal conclusions. We now tum to the Reply Brief.
We are not persuaded by Appellants' argument that "Examiner's
Answer conflates two different types of data identified in Ray, i.e., data
relating to 'compliance' and data relating to the 'cause of a glycemic
event."' Reply Br. 8. Appellants point out that Ray describes both data
directly attributable to compliance and data regarding glycemic events. This
argues that Ray describes glycemic event icons and reports rather than
compliance icons and reports.
Initially, we note that Appellants do not contest the icon and report
generated from an icon per se, only the label for the icon and report. The
label is given no patentable weight for being printed matter and non-
functional. Nonfunctional descriptive material cannot render nonobvious an
invention that would have otherwise been obvious. In re Ngai, 367 F.3d
1336, 1339 (Fed. Cir. 2004). Cf In re Gulack, 703 F.2d 1381, 1385 (Fed.
Cir. 1983) (when descriptive material is not functionally related to the
substrate, the descriptive material will not distinguish the invention from the
prior art in terms of patentability). Also labels cannot distinguish over the
art. Application of Bode, 550 F.2d 656, 660 (CCPA 1977) ("The specific
limitation need not be disclosed in haec verba in the reference"). There is
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also no structural or functional difference imparted by labels; they only serve
to apply a known process/structure to a specific context.
But even granting weight, first, given that Ray explicitly describes
compliance data labeled as such, and the ubiquity of using icons for different
applications, it was at least predictable to associate different icons with
different reports for reporting Ray's explicitly labeled compliance data.
Second, just because Ray describes data labeled as compliance data does not
mean the data and icons shown on Ray Fig. 6 are not also within the scope
of compliance data and icons. The icons relate to events such as food,
medication, and exercise. A report is generated when the mouse hovers
above an icon. Such events are at least indicative of a level of compliance
with respect to these parts of a regimen.
As to separately argued claim 16, Appellants argue that Yurko does
not describe "receiving a plurality of compliance indications for the plurality
of medical device users" and "in response to the compliance report icon
having been selected, receiving a plurality of compliance reports for a set of
medical device users." Claim 16, Reply Br. 9. Yurko explicitly describes
receiving data regarding plural users and generating aggregate reports.
Thus, Yurko describes receiving claim 1 type data from plural users, which
describes the first contested limitation. Given that Yurko also describes
generating aggregate reports from selecting a report choice, it was at least
predictable to also print the individual patient reports making up the
aggregate as well, if only to provide all the information needed to drill down
into the aggregate report.
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Claims 16--22 rejected under 35 U.S.C. § 103(a) as unpatentable over
Yurko, Ray, and Admitted Prior Art
This is not separately argued.
CONCLUSIONS OF LAW
The rejection of claims 1-26 under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more is proper.
The rejection of claims 1-15 and 23-26 under 35 U.S.C. § 103(a) as
unpatentable over Yurko and Ray is proper.
The rejection of claims 16-22 under 35 U.S.C. § 103(a) as
unpatentable over Yurko, Ray, and Admitted Prior Art is proper.
DECISION
The rejection of claims 1-26 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). See 37 C.F.R.
§ 1.136(a)(l)(iv) (2011).
AFFIRMED
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